UlCRARY OF CONGRESS. I 

! UNITED STATES briWIlICA. ^ 



A BRIEF INQUIRY 



INTO THE 



, M---^ 



AMERICAN PATENT SYSTEM, 



/^:^& G:-H0WS0N, 



SOLICITORS OF PATENTS, AND COUNSEL IN PATENT CAUSES. 



PHILADELPHIA 
WASHINGTON. 



THIRD EDITION, REVISED. 



4> 



Entered, according to Act of Congress, in tlie year 1873, 

By n. & C. HOWSON, 

In the Office of the Librarian of Congress at Washington, D.C. 



NsJV 



V 



^ 
^ 



SHERMAN & CO., PRINTERS, PHILADELPHIA. 



Ill 



United States Patent Office, 
Washington, D. C, 

June 18tli, 1873. 
Messrs. H. & C. Howson, 

Philadelphia, Pennsylvania. 

Gentlemen : I have been much pleased with your book entitled, 
*'The American Patent System." As a concise statement of 
principles underlying the grant of patent protection, and a brief 
exposition of the American patent system, it is valuable. 

In the discharge of my duties as Eepresentative of the United 
States in the International Patent Congress at Vienna, I should 
be glad to use some portions of your treatise. 

Can you, consistently with your personal interests, revise and 
condense your essay, and publish for this purpose a small pamphlet 
edition in the German language, which is the official language of 
the Congress ? 

If so, you will greatly oblige me, and at the same time, as I 
believe, serve the interests of American inventors and patentees. 
Yery respectfully yours, 

J. M. Thacher, 

Assistant Commissioner of Patents. 



Philadelphia, July 4th, 1873. 
To the Hon. J. M. Thacher, 

Assistant Commissioner of Patents. 

Sir : We have complied, as well as the brief time allowed us 
would permit, with your request that we should prepare and place 
at your disposal copies of a revised edition, in German, of our 
essay entitled, " The American Patent System." We also furnish 
you with a number of copies in English, which may prove useful 
where the others would not be available. We are obliged to you 



IV 

for the good opinion which it has pleased you to express of the 
work as a concise explanation of its subject. We had intended to 
add further commendatory remarks upon the examining system, 
based upon the operation of the civil service law. so effectually 
carried out by the Commissioner, the Hon. M. D. Leggett, but 
this, for want of time, we have been unable to do. 

We cannot permit this opportunity to pass, however, without 
recording our opinion, warranted by a long practice before the 
Patent OflSce, that the operation of the Act in question has effected 
very marked improvements in that Bureau. 

The plan of promoting trained offioers according to merit, as 
developed by a competitive examination, has resulted in securing 
most competent men for performing the delicate dut}- of examiners, 
and this, together with facilities afforded for appealing, renders it 
impossible that injustice should be done to a real inventor, whose 
case is properly presented and prosecuted. 

We trust that you may find our work in its present shape of 

some use, as you are kind enough to consider it may be, in the 

discussions in which you are to take part as the Representative 

of the United States in the International Patent Congress, about 

to be held at Yienna. 

Very respectfully yours, 

H. & C. HowsoN. 



CONTENTS. 



PAGE 

History of property in inventions, 7 

General principles governing patent property, .... 11 

Patents as a mode of remunerating inventors, .... 14 

Essential features of a good patent system, . . . 17 

The American patent system. — Previous official examination, . 19 

Benefits of an examining system, 26 

The examining system as viewed from abroad 28 

Remedies for defective patents, 37 

Disclaimers — Reissues, ......... 41 

General features of the U. S. Patent Laws 47 

Caveats, 48 

Conditions to patentability, ....... 49 

Interferences, .......... 55 

Priority of invfintion, 55 

Diligence, 57 

Appeals, 68 

Remedies for Infringement, 59 

Status of Foreign Inventors, 61 



THE AMERICAN PATENT SYSTEM. 



CHAPTEK I. 

HISTORY OF PROPERTY IN 
INVEIS^TIONS. 

An inquiry as to the principles 
and object of tlie American Patent 
System, may perhaps be made more 
clear if introduced by a brief his- 
torical retrospect. 

The English "Statute of Mo- 
nopolies," James I, 21st, is the 
earliest legislative recognition of the 
public policy of allowing temporary 
exclusive rights in the exercise of new 
manufactures. This statute declared 
utterly illegal and void, those royal 
grants for the sole buying, selling, 
working or using of different things 
within the realm, which, under the 
name of patents, had become odious 
from their mischievous and oppres- 
sive results. But from the general 
condemnation of monopolies, the 
act excepted, under certain qualifica- 
tions, patents for the sole working 
or making, during a limited period, 
of any manner of new manufac- 
tures, which others, at the time of 
making such letters-patent should not 
use. 

To the Anglo-Saxon mind — ^jeal- 
ous of anything tending to re- 
strain free action, and jealous, es- 



pecially, of any extraordinary in- 
struments of taxation — monopolies 
in trade or art, or in the making 
or vending of necessary or useful 
articles, were utterly abhorrent. 

But the declaratory Character of 
this statute shows that previously, 
at common law, it was recognized 
as a lawful prerogative of the Crown 
to grant to the inventors of new 
manufactures the sole right, for lim- 
ited periods, of working such manu- 
factures within the kingdom, and 
records of such grants are to be found, 
dating so far back as the time of Ed- 
ward III. 

As explained by Lord Eldon, this 
was a prerogative vested in the 
Crown as the depositary of the su- 
preme executive power of the state, 
to be exercised in behalf of and for 
the benefit of the public. 

But, as may be well understood, a 
royal prerogative of granting Pat- 
ents of Monopolies, so long as its 
triie object remained undefined and 
its exercise unregulated by express 
legislation, was exceedingly likely to 
be diverted from its legitimate uses 
and employed for the private advan- 
tage of the monarch, or of royal favor- 
ites, to the grievous disadvantage of 
the public. And so events proved, for 



8 



during the reign of Elizabeth especi- 
ally the prerogative was so stretched 
and perverted as to produce general 
mischief and complaint,whichfinally 
led to the passage of this Statute of 
Monopolies, the effect of which is to 
define the real extent and object of 
the royal prerogative with reference 
to the grant of patents affecting the 
exercise of trades. 

It is not our purpose to pursue 
this historical inquiry further than 
to point out that the common law 
of England early recognized the 
puUic policy of granting exclusive 
privileges in the exercise of new 
trades, and that theptuhlic advantage 
arising from the introduction or dis- 
covery of a new art or trade was re- 
garded as being that which alone 
warranted such grants. 

The words "true and first in- 
ventor," as used to this day in Eng- 
lish Patent law, include not only 
him who may first devise or discover 
something new, but him also who 
may first make known within the 
kingdom something which has been 
invented abroad. 

The reason of this is readily un- 
derstood when we consider the char- 
acter of the times in which the Eng- 
lish law on this subject may first be 
traced. The insular position of 
England and the imperfect, not to 
say dangerous character of travel, 
isolated her from the rest of the 
civilized world. Communication 
was limited and infrequent, and in 
every country patriotism took the 
Bhape of extreme jealousy of for- 



eigners. It is not hard to believe, 
then, that to import knowledge of 
an art from abroad was no small 
achievement, but might be regarded 
as rare merit. 

Thus in the Clothmakers of Ips- 
wich case, adjudged in the reign 
of James I, it is said, "If a man 
hath brought in a new invention 
and a new trade within the king- 
dom, in peril of his life and consump- 
tion of his estate or stocl', &c., or if a 
man hath made a new discovery of 
anything, in such cases the King, 
of his grace and favor, in recom- 
pense of his cost and travail, may 
grant by charter unto him that he, 
only, shall use such a trade or traf- 
fique for a certain time, &c." 

To the development of invention 
in the sense of originating and de- 
vising, neither the intellectual nor 
the social condition of these early 
times was favorable. 

The mass of laborers and artisans 
were little more than human ma- 
chines, running in one rut, and as a 
rule lacking the desire or the intel- 
ligence to seek to better their modes 
and means of working, while the in- 
tellectual efforts of those of higher 
rank and educated intelligence were 
not as yet fairly diverted from the 
unprofitable channels and myste- 
rious lore of a false and unprofit- 
able philosophy. Bacon's works 
were but now startling the edu- 
cated few, and the leaven of that 
practical and humane philosophy of 
which he was the first great exponent 
had yet to commence its work on 



men's minds. The science of the 
times was perfectly barren. The 
artisans were not tliinkers, and the 
thinkers had no acquaintance with 
the practical arts. There was yet a 
gulf, partl}^ of social and political and 
partly of educational creation, sepa- 
rating cultured intelligence and 
practical industry, which must be 
allied before there can be fruitful 
invention. 

Nor were the political troubles of 
the time, succeeded as they shortly 
were by internal war, favorable to 
the development of the industrial 
arts. Moreover the science of phys- 
ics was yet to be reduced to rational 
principles, and new modes of thought 
to be developed, and this was the 
slow work of years. The applica- 
tion of science to the practical arts 
must come later. 

It is not to be wondered at then, 
that, as is observed in the excellent 
treatise of Hindmarch, "for many 
years after the passing of the statute 
of monopolies the arts and manu- 
factures continued in a low state 
in England ; few of the inventions 
for which letters-patent were ob- 
tained were of any value, and the 
demand for novelties being very 
limited, no one was tempted to in- 
fringe the rights of patentees." 

It is not until the reign of George 
III that we find the subject of prop- 
erty in inventions attracting public 
attention. Then the troubles of 
Arkwright and of Watt, brought 
the subject of patents into court, and 
led to the earUest of that series of 



judicial reasonings upon the English 
law of patents, which gives that 
law what it has of system. 

We need not wonder that the 
early treatment of patents in the 
English courts was anything but 
liberal. The subject was a strange 
one, coming before them at a time 
when a very clear and high concep- 
tion of the importance and merit of 
inventors could hardly exist. 

In later years, as the exercise of 
the inventive faculties became more 
general and active, and had pro- 
duced results which forced a per- 
ception of the importance and value 
of original invention upon the public 
mind, a more liberal treatment of 
patents crept into the judicial prac- 
tice ; and the English patent law as 
it stands to-day is for the most part 
judge-made law, whose doctrines 
are founded upon reasoning as just 
and liberal, perhaps, as the bounds 
of the old legislation forming the 
text for the judicial commentaries 
will permit. 



The apparent public poUcy of en- 
couraging improvements in the use- 
ful arts, has led to the adoption 
by most civilized countries of patent 
systems more or less analogous to 
that of England. 

The earliest to adopt such systems 
were France and the United States. 

Our own patent system, first es- 
tablished by Act of Congress, in 
1790, and gradually developed and 
improved by subsequent legisla- 
tion, is based upon reasoning which 



10 



seeirs, on the whole, pecuHarly cor- 
rect, just, and liberal. 

It originated at a time and under 
circumstances favorable to the de- 
velopment of inventive activity, and 
which allowed a clear perception of 
the importance of invention to the 
domestic progress of the useful arts 
and its consequent utility to society. 

This led to a recognition of the 
principle of pm'ateW^/it which really 
underlies a patent system, and of 
the broad difference between patent 
privileges and monopolies, so called. 

A monopoly in its legal and odious 
sense, implies the taking away of 
some right from the many, for the 
benefit of particular individuals. 
Manifestly, then, the term is not 
applicable to letters-patent for new 
inventions ; that cannot be taken 
from the public, which the public 
has not ; a new invention or discov- 
ery can become public property, 
only by communication from the 
Inventor or discoverer ; until so com- 
municated voluntarily, it remains 
the secret property of the latter. 

This view of the case shows that 
into the public policy of patents 
enter important considerations of 
pubhc justice, an idea upon w^hich 
we shall have occasion to dwell more 
fully in the course of this treatise. 

Looking to the question how far 
our patent system may be adjudged 
from experience to have proved con- 
sistent with the principles of justice 
and policy upon which it is based, 
we find, to begin with, that the 
number of patents issued in this 



country, is very largely in excess of 
that in any other patent-granting 
country ; that there is here a more 
general and widely -spread inventive 
activity than elsewhere ; that Amer- 
ican labor-saving machinery and 
devices are in demand the world 
over ; and that inventors enjoy in 
this community, a power and con- 
sideration without parallel abroad. 

The vast amount of work to be 
done in developing the resources 
and industries of this new coun- 
try, by a comparatively small and 
scattered population, with moderate 
pecuniary resources, has made labor- 
saving mechanism a peculiarly ser- 
viceable instrument of power, sup- 
plying the place of manu'al labor 
with greater accuracy and economy, 
and so increasing the productive 
power of capital. 

Thus, it is because of its pecu- 
liarly manifest utility to the pubUc, 
that invention has here attained 
such dignity. 

How far has this been brought 
about by our patent system ? or in 
other words, how far has that sys- 
tem tended to incite and foster the 
exercise of ingenuity *? 

Our Patent Laws are, undoubted- 
ly, the most truly liberal of any. 
They more clearly than any other 
recognize the truths that productive 
industry is the basis of national 
wealth and power ; that such indus- 
try will flourish in proportion as 
it is made a secure source of indi- 
vidual profit ; that true invention is 
intellectual production of the most 



11 



beneficial kind, and that, therefore, 
true policy, which is always just, 
demands that it shall be made, as 
far as posssible, a secure source of 
individual profit. 

The benefit of the patent laws has 
been sought with avidity, and there 
can be no doubt that the advantages 
which they hold out have led to a 
multitude of inventions and novel 
disclosures, which otherwise had not 
been made. 

Of course, complaints and criti- 
cisms have been directed against the 
patent laws and their administra- 
tion, some of them perhaps measur- 
ably just, since an absolutely perfect 
system of human designing is hardly 
to be looked for, but for the most 
part, we beheve, fallacious, and aris- 
ing from a misapprehension of tlie 
true principles of the law. 

This misapprehension is due, in 
great degree, to the just favor with 
which inventors have been regarded, 
leading gradually to a somewhat 
one-sided and partial understanding 
of the laws peculiar to them. 



CHAPTEE II. 

GENERAL PRINCIPLES GOVERN- 
ING PROPERTY IN INVENTIONS. 

It is our purpose in this chapter 
to inquire first into the true nature 
and purpose of patent laws, for it is 
necessary to* ascertain this, before 
we can look with, intelligence into 
the question of the justice and efli- 
ciency of our own law. 



The patent laws, as viewed in 
reference to inventors only, are the 
means of securing temporary exclu- 
sive rights to the use of new and 
useful inventions, and it is not un- 
natural that inventors themselves 
should regard the laws in that light 
only. So viewing them, regarding 
themselves as the only parties inter- 
ested, they will look with impa- 
tience and disfavor upon those fea- 
tures in the laws, or the administra- 
tion of them, which may seem mere 
embarrassments or impediments in 
the way of obtaining patents. 

Yet this is not a true, because 
only a partial, view of the subject. 

It would be an unprofitable and 
unnecessary task to touch upon the 
question of man's natural property 
in his own original ideas. It is suffi- 
cient to recognize the fact that as 
long as they are locked up in his own 
breast, they are likely to be of little 
benefit to himself or any one else ; 
to be of use they must, as a rule, be 
disclosed ; and when once disclosed, 
they cannot be stamped with the 
character of individual property, 
and be identified and protected as 
such, except through the medium 
of positive legislation. 

But society can he looked to for 
such legislation only if, and so far 
as it may be, consistent with the 
general welfare. 

Consequently it is in utility to 
society that we must seek the rea- 
son and justification of positive laws 
recognizing individual rights in con- 
nection with invention. 



12 



The progress of the viseful arts is 
a most important branch of the 
general welfare, and inventors are 
the chief instruments for the ad- 
vancement of the useful arts. An 
inventor is not bound to disclose 
his invention ; he may, if he so 
elect, keep the I^nowledge of it to 
himself, but generally he cannlbt 
himself profit by its use, without, in 
the very act, disclosing it to others, 
and when thus disclosed, there is 
nothing in the absence of positive 
law on the subject to prevent other 
members of the public from avail- 
ing themselves of an idea, which 
has then in a certain sense become 
public property. 

Evidently, in a state of society 
where for an inventor to disclose his 
invention is altogether to lose, with- 
out return, the special benefit of 
it, and of the labor and expense he 
may have bestowed upon it, there 
is little or no encouragement for the 
exercise of ingenuity, and the ex- 
penditure of thought, time, labor, 
and money in the bringing to light of 
new inventions. Men will not wil- 
lingly sow merely for others to reap. 

It may be said that tlie inventor 
derives a profit from his original 
thought, in the advantage which it 
gives liim over competitors, by way 
of increased faciUties or economy in 
the prosecution of his business. But 
if he cannot hope to maintain this 
power longer than he can keep it 
secret, but must upon accidental 
disclosure share his advantage with 
all his competitors, so that he will 



then occupy no better position rel- 
atively than before, plainly the in- 
ducement to invention is small in- 
deed. 

It is to be considered, moreover, 
that in an active condition of the 
inventive mind, a vast number of 
original ideas must be produced, 
which have no relation to the par- 
ticular employment of the inven- 
tors, and for the encouragement of 
such a general active condition, 
therefore, some special inducement 
must exist. 

Some few inventions there are 
which may be practiced in secret, 
and no doubt valuable and import- 
ant discoveries have in this way died 
with their originators, and so been 
lost to the world. Of such conceal- 
ment it is desirable that there should 
be as little as possible, not only be- 
cause it tends to deprive the public 
of useful knowledge, but because it 
tends to destroy confidence, and 
arouse doubt and suspicion, hamper- 
ing business, and interfering with 
peace and good order. The conceal- 
ment of inventions, where it may 
appear practicable, will, perhaps, 
always be to some extent indulged 
in, but it is evidently impolicy on the 
part of the pubhc to encourage such 
concealment, by totally ignoring the 
interests of inventors. 

The mischiefs, public and private, 
likely to proceed from compelling 
inventors to secrecy, have been thus 
forcibly represented by an acconi- 
phshed writer : 

"A manufacture conducted in se- 



13 



cret, is at an enormous disadvantage. 
Processes must be separated, that 
the workman may not apprehend 
the mystery ; immense wages must 
be paid to retain them from desert- 
ing to competitors ; simpUcitymust 
be avoided, and expense introduced, 
for no purpose but to complicate 
and confuse the methods used. Ex- 
periments for further improvement 
must be avoided, for they would not 
only tend to disclosure, but to the 
loss of the outlay incurred in estab- 
lishing the existing expensive meth- 
ods. After all, if the attempt to 
maintain the secret were successful, 
the public would be no gainers, for 
it would constitute a strict mo- 
nopoly, and, unUke a patent, a mo- 
nopoly that would be lasting either 
till the secret was discovered, or 
till it died with its first employers." 

To this it need only be added that 
in such a state of affairs, many im- 
portant improvements would be for- 
ever lost, from the inability of the in- 
ventors to undertake the burden of 
practicing them secretly, and their 
natural unwillingness to run the risks 
of disclosing them to persons who 
might assume that burden. 

The relative positions then, of the 
public and inventors, and the conse- 
quences proceeding therefrom, may 
be thus summarized : 

I. The public is vitally interested 
in the progress of the useful arts, 
and to this progress the production 
and disclosure of original invention 
are essential : it is the clearest piiUic 
2JoUcy to encourage such production 



and disclosure by any proper 
means. 

II. Inventors, in producing and 
disclosing improvements in the use- 
ful arts, add materially to the pub- 
lic stock of wealth and power, and 
are therefore producers of the high- 
est order ; and as payment is the 
rightful consequence of physical or 
mental labor, time, and capital ex- 
pended in production, it would seem 
the clesLvest public justice that some 
mode should be provided of remune- 
rating inventors in proportion to the 
value of their productions and dis- 
closures. 

III. From the preceding proposi- 
tions it follows that the pubhc object 
of promoting the progress of the 
useful arts is that which aUies the 
interests of the public and those of 
inventors. The consideration which 
passes from the inventor to the pub- 
lic, entitling him to some return, 
is his contribution to that progress. 

We come then to the conclusions 
that, practically speaking, the rights 
of inventors, as such, are those cre- 
ated by positive legislation ; and 
that the object of legislation, in 
creating such rights, is to promote 
the progress of the useful arts by pro- 
viding some mode by which inven- 
tors may be remunerated for their 
instrumentality in promoting that 
progress. 

Thus we find the true object of 
our own patent system in the title 
of the original act of 1790, and of the 
succeeding acts: "An Act to pro- 
mote the progress of the useful arts. ' ' 



14 



CHAPTER III. 

OF PATEI^TS AS A MODE OF RE- 
MUNERATING INVENTORS. 

The propositions admitted, that 
it is both poUtic and just — having 
regard to the progress of the useful 
arts — to provide some mode in which 
inventors may derive personal profit 
from their contributions to that 
progress, the next point to be as- 
certained is the best mode. 

That which is the most obvious, 
is the payment by the state of a 
stated price or premium, but there 
are many and obvious objections to 
this mode. It could not be practi- 
cally carried out with even justice 
to the public and to inventors, and 
it would entail a cumbrous and ar- 
bitrary system peculiarly open to 
abuse. It would be necessary either 
that the law itself should ascertain 
and fix valuations for inventions 
generally — manifestly an absurd 
and impractical thing, and one 
which, if attempted, would work 
injustice, sometimes to the public, 
and sometimes to inventors, — or the 
fixing of values must be left to 
tribunals, whose decisions would, 
of necessity, be arbitrary and un- 
satisfactory, smce they could not 
apply to the determination of the 
question the only reasonable and 
just test, that of experience. 

These, and other objections 
equally obvious, but to which it is 
not to our purpose here to allude, 
make it plam that a system of this 
kind would not well answer the end 



of promoting the progress of the 
useful arts. 

The objections which we have 
cited, going to show what is not a 
good and efficient mode, point to the 
principles necessarily governing a 
mode which is so 

It is just and proper that a new 
and useful invention should be paid 
for by the public, in proportion to 
its proven value to the public, and 
that the mode of valuation should 
be the same as in the case of other 
products of individual skill and 
labor. 

The public verdict, as evidenced in 
demand, is the best general test of 
the value of an article, and the profit 
derived from manufacture and sale, 
if these be carried on with proper 
enterprise and discretion, will be in 
proportion to the value. 

This is the philosophy of that 
mode of paying inventors which is 
known as the patent system ; a 
'mode the most just and reasonable 
that could be devised. 

Letters-patent grant to the in- 
ventor of a new and useful improve- 
ment the exclusive right, for a 
stated period, of making, using, and 
selling such improvement 

If an invention thus secured for a 
time by patent be really valuable 
and important, it is of course desi- 
rable that it should be brought into 
public use as speedily and widely 
as possible, and here the interests 
of the public, and those of the in- 
ventor are alike, for the advantage 
which the latter can derive from 



15 



his patent, must altogether depend 
upon his diligence and discretion in 
availing himself of the exclusive 
right which it gives him. If, on the 
other hand, the invention be of no 
value and importance, the exclusive 
right of the inventor is altogether 
harmless ; it will be practically no 
restraint upon the public, and will 
bring the inventor no more than 
he is entitled to. 

Patents — in so far as they operate 
as a restraint upon the public — are 
yet decidedly beneficial restraints, 
for during the term of the inventor's 
exclusive right, the public are bene- 
fited in the open practice by the in- 
ventor himself, or those acquiring 
the right from him, of an invention, 
which, but for the prospect of that 
right, might not have been made, 
or having been made, might not have 
been disclosed. So far as the exclu- 
sive right operates as a tax upon the 
public, it is a tax justly proportion- 
ate to the ascertained value of the 
consideration given by the inventor ; 
and after the exclusive right has 
expired, the public freely use the 
invention themselves, being enabled 
to do so by the knowledge which 
the inventor has imparted to them. 
These then are the principle and the 
object of a patent system : to pro- 
mote the progress of the useful arts 
by extending to inventors that en- 
couragement to exert their inge- 
nuity, and disclose their inventions, 
which can be given with most ad- 
vantage, both to the inventor and 
the community, in the shape of a 



temporary exclusive right to the 
former to make, use, and vend his 
invention. 

Thus viewed, the patent laws as- 
sume the aspect of a compact be- 
tween inventors and the public, by 
which the public in consideration of 
the disclosure by the inventor of an 
original thought which it is not 
compulsory upon him to disclose, 
yet of which, without such disclo- 
sure, neither he nor they can have 
the use and enjoyment, undertake 
to secure to him for a limited period, 
by positive grant, that exclusive 
right in his invention, which with- 
out such positive grant, it would be 
impossible for him to maintain. 

The policy of patents as a means 
of promoting the progress of the 
useful arts, has been disputed, never 
seriously, however, in this country. 
In England the proposition has been 
made, and urged more loudly than 
forcibly, to abolish patents ; but 
there the would-be abolitionists are 
a very small minority, and their 
views have been vigorously and suc- 
cessfully combated by some of the 
leading intellects of the country. 

Holland stands alone as the coun- 
try which has abolished patents. 
The abolition occurred in 1869, the 
royal proclamation stating that ' ' the 
grants of exclusive rights for inven- 
tions and improvements or importa- 
tions of objects of art and industry 
promote neither industry nor public 
interest." 

In its experience on this subject, 
Holland seems to be as exceptional 



16 



a country as it is in everything else. 
"Such a land as Holland," says a 
recent American writer, "exists 
nowhere else. It is not merely the 
most singular of kingdoms, it is the 
onl}^ one of its kind. You may travel 
the world over and yet be unable to 
form any conception of the Nether- 
lands. You may live there j^our Ufe 
long, and form no adequate idea of 
the remainder of the globe." 

It is not at all unlikely that among 
a people so conservative and self- 
satisfied as the Hollanders, patent 
laws did not promote industry. The 
people, though robust, brave, and 
industrious, appear to have a horror 
of innovation, as is attested by their 
obstinate adherence to sleighs in 
place of wheeled vehicles, for draw- 
ing heavy loads over rough pave- 
ments. Little progress in the useful 
arts is to be expected in a country 
where men and horses continue to 
be shod with wood, and where men, 
women, and children are still to be 
found yoked to the same tow ropes 
with dogs and donkeys on the banks 
of the interminable canals. 

It may be very true that the Dutch 
patent law did not promote the pro- 
gress of the useful arts in Holland ; 
great progress would scarcely be ex- 
pected among a people so obstinately 
conservative, no matter what in- 
centives were offered ; but the Dutch 
law was so intensely selfish in its 
character that it would scarcely be 
expected to promote any public ad- 
vancement in the arts, one of its 
prominent clauses being to the eflect 



that a native forfeited his patent if 
he secured his invention in any other 
country.* 

The patent abolitionists were un- 
fortunate in pointing to the example 
of Holland, a country where the 
hmited manufacturing interests are 
at a standstill, if not retrograding, 
and where the prominent products 
are gin, tulips, and cheese. 

Switzerland, a country which 
never possessed any patent laws, is 
also pointed to by the advocates for 
the abolishment of patents. In re- 
spect to Switzerland, Mr. Daj', in 
his able papers read before the Philo- 
sophical Society of Glasgow, papers 
from which we shall have to quote 
hereafter, says : " When do we hear 
of an important invention coming 
to maturit}' in this country ? There 
is plenty of inventive talent in 
Switzerland, but Swiss inventors 
lack the stimulus of a patent law, 
and, therefore, have to come here or 
go elsewhere where an invention can 
be patented, and is recognized by 
the state as hondjide property." 

To again quote from Mr. Day's 
book: "The patent S3'stem is the 
onl}' one by which a nation can secure 
the maximum advantage from the 
invention, the only one by which in- 
vention is properly encouraged, the 
only one by which the real value of 

* A Dutch legislator, in advocating the aboli- 
tion of patents, declared that it was useless to 
point to the United States and England in sup- 
port of Patent laws, because those countries 
were in a degenerate condition, not better than 
that of Holland at the close of the sixteenth 
century. 



ir 



an invention can be ascertained, and, 
therefore, the only one which can 
secure not merely reward, but a due 
reward, precisely its exact worth to 
the inventor." 

CHAPTER IV. 

ESSENTIAL FEATURES OF A GOOD 
PATENT SYSTEM. 

Assuming it to be politic and 
just to provide some mode in which 
the public shall pay inventors for 
their contributions to the progress 
of the useful arts, and that the best 
mode is by a properly devised patent 
system, we come next to consider 
what should be the characteristics 
of such a system. Undoubtedly 
the soundest patent law is that 
which treats inventors with the 
most Uberality, on the plain grounds 
that the more liberal the law, the 
more it is likely to answer its pub- 
lic purpose of promoting the prog- 
ress of the useful arts, by induc- 
ing the production and disclosure 
of new inventions. 

But this idea of liberality to in- 
ventors is not to be carried so far, 
as to lose sight of the public object 
of the law, and of the fact, that 
having a reference to that object, 
inventors are simply the instru- 
ments and means. In other words, 
it is not to be forgotten that the 
utility of inventors to society is the 
consideration upon which the legal 
rights peculiar to them as inventors 
are based ; that they occupy pre- 



cisely the same footing as other pro- 
ducers to the public stock, and that 
society, in contracting to pay them, 
has the right to establish such pro- 
visions and conditions, as are neces- 
sary to assure that in each case the 
effect of the contract shall accord 
with its object and with the general 
welfare. 

If these principles were continu- 
ally and clearly borne in mind, we 
should have less of that criticism of 
the patent laws, based upon the 
false assumption, often expressed, 
that their one object is to " pro- 
tect inventors." That is their end 
so far as concerns the particular 
interests of inventors, but they 
have a superior and public object, 
that of promoting the progress of 
the useful arts ; with reference to 
this object, the "protection of in- 
ventors " is simply the means. 

The proper liberality of the law 
to inventors is based not upon 
poetic sentimentality but upon per- 
fectly utilitarian grounds and princi- 
ples of practical justice. 

Of the patent laws, therefore, as 
of any other contract, the justice is to 
be measured by the degree to which 
they appear to consult and recon- 
cile the interests of all parties con- 
cerned, and to proceed upon the 
truth that the intended beneficial 
operation of the bargain must be 
destroyed by any provisions tend- 
ing to antagonize the interests of 
the respective parties. 

If this test be applied to our own 
patent system, we believe it will be 



18 



found that the provisions and con- 
ditions wliicli seem to be in the in- 
terests of the public, are also really 
to the advantage of inventors ; that 
the same precautionary measures 
work to the profit of both parties to 
the contract. 

But before proceeding to apply 
the test, let us see what are the 
leading principles which, having due 
reference to the object to be attained, 
may be considered as essential to 
be recognized and followed by any 
sound patent law. 

It is evident, to begin with, that 
new and useful inventions only, can 
be the subject of valid patents ; 
for if an inventor produce and dis- 
close something which is not new, or 
something which cannot be used, 
or which it is against the interest of 
society to allow to be used, he 
simply gives society that which it 
had before, or that from Avhich it 
can derive no benefit : which is to 
give nothing ; so that society owes 
him nothing. A patent, therefore, 
granted for such an invention, would 
be invalid for want of consideration. 

Presuming the invention to be 
new and useful, it is no less essen- 
tial to the validity of the patent that 
it shall have been fully and fairly 
disclosed by the inventor; other- 
wise his part of the compact has not 
been carried out in good faith. 
There must be no concealment, no 
deception, but the information given 
must be sufficient to guide those 
skilled in the art to a beneficial use of 
the invention, so that the public may 



fully and freely advantage by it after 
the expiration of the patent. 

In addition to this it is essential 
that the inventor shall have clearly 
pointed out and particularized what 
he claims to be original with him, 
that the public, during the existence 
of the patent, may be fully advised 
as to the nature and extent of the 
exclusive right which it confers, and 
as to what it is they are restrained 
from making, using, or selling, save 
with the permission of the patentee. 
As to this there should be no dis- 
simulation, duplicity, or dubious- 
ness, but a clear and candid state- 
ment of claim. 

Now it is manifestly just both to 
the public and inventors to insure 
as far as possible that none but valid 
patents shall be granted ; that is to 
say, such as do in truth bestow that 
exclusive right which they pwqjort 
to bestow. 

This is just to inventors, because 
the value of patent property, as of 
any other, is In proportion to its 
ascertained degree of certainty and 
security;, and just to the pubUc, be- 
cause the issue of valid patents only 
is plainly an important element in 
the efficiency and public advantage 
of a patent sj'stem. 

It would seem then to be the 
important end to which the provi- 
sions of a patent law should pri- 
marily be directed, to confme the 
issue of patents as fiir as possible 
to inventions new and useful, clearly 
disclosed, and distinctly claimed. 

A second object to be realized to 



19 



the fullest extent possible, consis- 
tently with the maintenance of the 
first, is that patents shall be easily, 
speedily, and cheaply attainable, so 
as to J>e within reach of rich and 
poor alike. 

Here, too, the interests of the 
public and inventors are identical, 
for the more easily and cheaply 
valid patents can be obtained, the 
greater will be the number of new 
and useful inventions made and 
disclosed, and the more rapid in 
consequence the progress of the use- 
ful arts. 

Naturally enough, inventors anx- 
ious to obtain their patents, and 
inclined to look upon the grant as 
matter of natural right, are apt to 
look upon this second object as the 
most important. But a little re- 
flection will convince them that the 
matter of prime importance to them 
is the degree of confidence which 
they can place in the validity of 
their patents, and that a reasonable 
expense of time and money in ne- 
cessary proceedings to ascertain, 
before a patent is granted, that it 
shall have the essentials to validity, 
is beneficial to themselves. 

In this regard, too, the interests 
of inventors and the interests of the 
public are the same. 

It is to the advantage of both — 
it is the right of both — that, while 
the issue of valid patents shall be as 
free as possible, the execution of the 
law shall yet be so regulated that the 
smallest possible number of invalid 
patents shall escape into existence. 



CHAPTEE Y. 

THE AMERICAN PATENT SYSTEM. 
PREVIOUS OFFICIAL EXA:vnN'A- 
TION. 

We now come to the considera- 
tion of the more immediate subject 
of this treatise, — the merits of the 
American patent system. And first, 
as to that examination into the 
novelty and utility of an invention 
before granting a patent, which is 
the main distinguishing feature of 
the system. This peculiarity is a 
recognition of the principle to which 
we have above referred, that the 
first point of importance, both to 
the public and to inventors, is to 
provide for ascertaining, before a 
patent is granted, that the invention 
is new, useful, and clearly described 
and claimed. 

But perhaps the intent and efiect of 
this previous examination can best 
be understood by comparison with 
foreign systems, of which it forms no 
part ; that of England, for example. 

In England patents are, to all 
practical intents and purposes, 
granted for the asking, without in- 
quiry as to whether the inventions 
sought to be patented are either new 
or useful, or sufficiently described. 

The time and mode for determin- 
ing these questions are after the 
grant of the patent, through the 
medium of court or jury. 

It is plain, therefore, that an 
English patent carries with it no pre- 
sumption of validity, unless, having 
undergone thorough scrutiny in the 



20 



course of litigation, it has been in- 
dorsed by court or jury. 

Of what satisfaction and value to 
the inventor, it may be asked, is a 
patent upon which he cannot place, 
nor expect others to place, any de- 
gree of confidence, unless it shall 
have successfully passed through the 
fire of litigation. 

Such a system is a departure from 
the true principles of good legisla- 
tion, whose highest ofiice it is to cut 
off sources of litigation. 

For this end are designed the 
numerous regulations which the 
laws provide, touching the acquisi- 
tion, holding, and transmission of 
all kinds of property, with a view 
to ascertain, define, and publish the 
nature and extent of individual 
rights, that there may be the least 
possible occasion for those mis- 
takes, and that confusion or conflict 
of claims from which litigation 
springs. 

And certainly patent property 
should not be excepted from, but 
should rather receive an unusual 
degree of this solicitude of the law, 
for it is property which the law itself 
has created for the public benefit, 
and which, therefore, not only pub- 
lic policy but public good faith re- 
quires should be most carefully and 
tenderly guarded from the mischiefs 
of litigation. 

The Enghsh patent law, there- 
fore, in making htigation necessary 
to raise any practical presumption 
of the validity of a patent, is cer- 
tainly an anomalous law. 



An English patent which has not 
yet been successfully litigated is 
naturally an object of doubt and 
suspicion — a state of affairs produc- 
tive of two classes of evils : First, 
the very inferior value of patents as 
negotiable property, an evil which 
that large class of inventors lacking 
capital will readily appreciate ; and, 
second, the constant and aggrava- 
ted violation of patent rights which 
must ensue from the general disre- 
gard in which those rights, from 
their uncertainty, are held. 

It is manifest that under such a 
system the field of patent property 
is a mere scrambling-ground, with 
all the odds in favor of the wealthy 
and the unscrupulous. A poor pat- 
entee will be fortunate indeed if he 
is able to make his patent a som'ce 
of profit to himself ; the chances are 
that he will be driven to his election 
whether quietly to submit to the 
wholesale piracy of his rights, or 
whether dearly to purchase the alli- 
ance of capital for the maintenance 
of those rights at the sacrifice of the 
lion's share in them. 

In this way patents, while they 
may serve to enrich the rich, are a 
very doubtful blessing to the poor. 
The privilege which such a patent 
confers, is, substantially, the privi- 
lege of establishing a right, if one 
can, by a lawsuit, a species of in- 
vestment in litigation in which none 
but a litigious man can find enjoy- 
ment, and none but a wealthy man 
can indulge. 

It is true, that the inventor of a 



21 



really valuable improvement may 
find some protection in the enterprise 
of capitalists desirous of obtaining 
the benefit of it, but this is an acci- 
dental and not always desirable sort 
of protection. 

It is, perhaps, one of the strongest 
possible arguments in favor of a 
patent system, that the English 
system, inefficient and unjust, as 
in many respects it is, and very ex- 
pensive, has yet undoubtedly done 
much to foster the practical arts, 
and is resorted to by a large number 
of inventors. 



Such evils as we have indicated, 
the system of previous examination 
adopted by our law is intended to 
obviate as far as possible. Abso- 
lutely to remove patent or any other 
property from the region of doubt 
and ntigation is impossible, and 
however perfectly adapted to this 
end the theory of a law may be, its 
administration must, if only from 
unavoidable errors of judgment, fall 
short of attaining a practical realiza- 
tion of that theory. We say this be- 
cause of the complaints and crit- 
icisms which have from time to time 
been directed against our law ; un- 
doubtedly the majority have arisen 
from particular instances of failure 
or shortcoming in the administra- 
tion of the law. 

It is not our purpose here to con- 
tend that the past or present ad- 
ministration of the examining sys- 
tem was or is perfect, or so nearly 
perfect as it might be. It is no 



doubt the case that the capacity of 
the machinery of administration 
has not kept pace with the rapidly 
growing demand upon it, and time 
and experience have suggested, and 
will continue to suggest desirable 
additions and modifications in de- 
tail. 

But from the complaints, just and 
unjust, made against the adminis- 
tration of t\\e examining system, 
have been deduced arguments that 
the system itself is a failure, a posi- 
tive disadvantage and should be 
abolished. 

The very doubtful soundness of a 
conclusion thus arrived at is pretty 
apparent. It is not a fair conclu- 
sion, unless it be shown that the 
defects of administration are not 
the accidents liable to arise in any 
administration, but are defects origi- 
nating and inherent in, and insej)a- 
rable from the very nature of the 
particular system administered. 
When it is shown that the best at- 
tainable means of administration 
have been tried and have resulted 
in the same faults and defects as 
inferior means, then it is allow- 
able to assume that the system can- 
not be administered, and should 
be abolished ; but in this case the 
complaints, so far as they are true, 
are such as indicate very possible 
improvements of administration. 

Since, however, this subject of the 
advantage or disadvantage of an 
examining system is one of great 
importance and has attracted much 
discussion pro and con, it is worth 



22 



while to look into the complaints 
which have been urged against our 
system to see how far these com- 
plaints are justifiable, and entitled 
to the great weight which has been 
given to them. 

It is necessary, first, to strij) the 
question of a very common fallac}', 
arising from an utter misunder- 
standing of the law, but which is 
often advanced as a proof that the 
system of previous examination is 
not effective. It is undoubtedly 
the fact that an exceedingly large 
proportion of patents granted are 
for trifling things, or for things 
valueless, because inferior to pre- 
viously existing things, for the same 
or a similar purpose. Now, it is 
asked, why does the government, 
which pretends to grant patents 
for new and useful inventions only, 
constantly issue patents in large 
numbers for useless and trifling no- 
tions? Such a question is simply 
an entire misapprehension of the 
intent of the law, and of the mean- 
ing of the word useful as employed 
in the statute. The word "useful" 
is not there synonymous with the 
word "valuable," nor does it indi- 
cate that an invention to be pat- 
entable must appear to be more 
efficient than, or even equally effi- 
cient with, prior inventions of the 
same class ; but it simply means 
that to be patentable, an invention 
must be capable of use for some bene- 
ficial purpose, and not inoperative, 
vicious, or immoral. These are 
questions which can be decided 



soundly and justly by a competent 
tribunal, from the evidence afforded 
by the application for a patent. 

But the value of an invention, 
which consists in its utility to the 
public at large, or more immedi- 
ately to those concerned in that 
branch of art to which it relates, 
can evidently be determined only 
by time and experience in actual 
use ; the only just verdict must 
be one rendered by the public from 
use ; no law, nor man, nor set of 
men, can justly undertake to pre- 
determine the question, since such 
a decision must necessarily be utter- 
ly arbitrary, and mere matter of 
opinion based upon insuflicient evi- 
dence. 

This point we have already un- 
dertaken to illustrate, in discussing 
the question of the proper mode of 
paying inventors for their contribu- 
tions to the progress of the useful 
arts ; and we observed that patents 
were the fairest mode, because in 
leaving the question of the value of 
each particular contribution open, 
to be decided in the onl}' proper 
waj^, they give to the inventor the 
opportunity, by the exercise of ordi- 
nary diligence and discretion, of 
deriving a remuneration proportion- 
ate to that value, as thus most 
soundly tested and determined. 

To be sure there are many cases 
in which ordinary perception and 
common sense, could without ap- 
plying the tests of use and experi- 
ence, soundly and justly determine 
the worthlessness of an invention, 



23 



but in all cases such a mode of 
decision would be objectionable as 
arbitrary, and in very many cases 
would be at fault and unjust. 

It would not be just to inven- 
tors generally, and there must be 
one rule of justice for all, to at- 
tempt to make this question of value 
a subject for legal or official decision, 
nor would it be in any way benefi- 
cial to the public. It is equally to 
their interest and to that of inven- 
tors, that every new idea should be 
allowed the test of practical experi- 
ence. There is no reason why in- 
ventors should not have the same 
opportunity, as other producers, of 
submitting their productions to pub- 
lic arbitrament. Kor can patents 
for valueless inventions be objected 
to as working any legal injury to the 
public, for patents cannot practi- 
cally operate as a restraint or as a 
tax upon the public with reference 
to things which, being of no advan- 
tage, they do not care to use. 

There is no doubt that patents 
for valueless inventions have a mis- 
chievous effect in leading to lament- 
able wastes of valuable time and 
money ; but this palpably is some- 
thing for which the patent laws and 
their administration are in no way 
answerable. The evil in great mea- 
sure arises from the very misappre- 
hension of the law which we have 
been discussing, and which causes 
people to accept patents in the way 
of official evidence, which they are 
not, of the value of the things pat- 
ented, and thus to conclude that 



they are valuable, without inquiry 
or even against the evidence of their 
own senses. This of course is a 
voluntary error, for which the person 
in error is alone responsible. 

And for the evil, so far as it arises 
from mere lack of discretion, or 
knowledge in individuals investing 
their time and money in patented 
inventions, to hold the patent sys- 
tem responsible, or to draw there- 
from an argument against that sys- 
tem, is about as reasonable and logi- 
cal as though a man, having stupidly 
wasted his money upon a poor piece 
of land, should cast the blame upon 
Nature for having placed the land in 
his way. 

It is true that our Patent Act au- 
thorizes the Commissioner to issue 
patents where he shall find the in- 
ventions sufficiently useful and im- 
portant, and this might seem to give 
the Commissioner a discretion ca- 
pable of much latitude in its exer- 
cise, in adjudging as to the patent- 
ability of inventions. But this 
discretion is to be exercised in ac- 
cordance with the known policy and 
principles of the law — as judicially 
settled — and the inquiry of the Com- 
missioner is to proceed no further 
than to ascertain that the invention 
has that negative sort of utility 
which is necessary for the support 
of a patent if granted. 

"By useful invention in the 
statute (said Judge Story) is meant 
such a one as may he applied to some 
use ; beneficial to society in contra- 
distinction to an invention which is 



24 



injurious to the morals, the healtli, 
or the good order of society. It is 
not necessary to establish that the 
invention is of such general utility 
as to supersede all other inventions 
now in practice, to accomplish the 
same purpose. It is sufficient that 
it has no noxious or mischievous 
tendenc}^, that it may be applied to 
practical uses, and that so far as it 
is applied it is salutary. If its iwac- 
tical utility he very limited, it will 
follow that it will he of little or no 
profit to the inventor; and if it he 
trifling, it will sink into utter ne- 
glect. The law, however, does not 
look to the DEGREE of utility ; it 
simply requires that it shall be 
capable of use, and that the use is 
such as sound morals and policy do 
not discountenance or prohibit." 

The same doctrine is enunciated 
in numerous decisions, and points 
clearly to the bounds of the Com- 
missioner's discretion in this matter. 
It extends no further than that, be- 
fore issuing a patent, he should sat- 
isfy himself that the invention has 
utility as distinguished from utter 
imjDracticability or noxious ten- 
dency, and importance as distin- 
guished from absolute frivolity. 
The question of value then, in its 
ordinary relative signification, the 
patent laws very properly do not 
bring into consideration as in any 
way entering into the question of an 
inventor's legal title to a patent, 
and it is a fallacy to suppose that 
the system of previous examination 
is intended to inquire into or deter- 



mine the point of value as thus 
understood. 

Curiously enough upon this same 
fallacy is based a very common ac- 
cusation of injustice against the ex- 
amining system and its adminis- 
tration. It is often gravely ob- 
jected, and was so but a short time 
since by one of our leading pubUc 
journals, that the power conferred 
upon the officers of the patent office, 
of judging upon the value of inven- 
tions, is too arbitrary and danger- 
ous a power. 

So it would be if it did but exist. 
This objection in fact evidences a 
popular recognition of the truth 
which we have been endeavoring 
to illustrate, that an examining 
system extending to the question 
of value could not be justly ad- 
ministered. To the assertion that 
no such power exists, it may be re- 
plied that officers of the patent office 
have been known to exercise such 
a power. True enough, and this 
merely goes to show that among 
the numerous officials of the patent 
office some may, from time to time, 
be found who, from misunderstand- 
ing of duty, exceed their powers, 
and usurp an unlawful jurisdiction. 

That ordinarily no such power is 
attempted to be exercised is best 
proven by the large number of pat- 
ents issued for things of indifferent 
value or of no value at all. This 
fact, used as an argument against 
the efficiency of the examining sys- 
tem upon the hypothesis that an 
inquiry into value is part of that 



25 



system, exposes at once the fallacy 
of that hypothesis, and that of the 
allega.tion of injustice based upon 
it. 

Beturning to the fact that officers 
of the Patent Office have been known 
to exceed their duty, by pronouncing 
judgment upon the value of inven- 
tions, this of course is a just ground 
of complaint, certainly, hovrever, 
not against the examining system, 
in a departure from whose princi- 
ples the wrong consists. 

If the wrong were prevalent, there 
would be very good ground for as- 
serting that the administration of 
the law was not in accordance with 
the law ; but that the wrong is not 
prevalent the patent lists are con- 
vincing proof. 

Still another very common falla- 
cy is that which holds the examin- 
ing system responsible for the many 
patents of little or no value, not 
because they refer to inventions 
of little or no value, but because 
the specifications and claims have 
been defectively and insufficiently 
drawn. This is something for which 
the patentees are alone responsi- 
ble ; it is at once their privilege 
and their duty to specify what 
it is they claim to have invented. 
The functions of the officers of the 
Patent Office are advisory no fur- 
ther than to ascertain before grant- 
ing a patent that the alleged inven- 
tion is intelligibly described, and 
that the claim made is certain and 
distinct. This much they must of 
necessity do in undertaking to look 



into the question of novelty and 
utility. And if the description be 
not sufficiently clear, or more is 
claimed than the applicant is enti- 
tled to, it is their duty to tell him so, 
that he may amend or modify his de- 
scription or claim accordingly. But 
it is no part of their duty to volun- 
teer information that less has been 
stated or claimed than might have 
been ; this would be uniting the 
functions of judge and counsel, and 
assuming a duty which the law very 
properly leaves to the inventor him- 
self. It is a fair presumption that 
the inventor is a competent guar- 
dian of his own interests, so far as 
concerns the disclosure of his own 
ideas, and the presentation of his 
own claim. That he will claim less 
than he thinks himself entitled to is 
not to be supposed. 'Nov does the 
case differ, though the inventor him- 
self be incompetent to state his in- 
vention and claim with proper skill, 
for in such case it is incumbent 
upon him to seek the counsel of 
those who can perform this duty for 
him. The strict impartiality requi- 
site to the faithful performance of 
the duties of an officer of the Pat- 
ent Office must prohibit any such 
officer from placing himself in the 
position of an advocate for the in- 
ventor whose claim he is to pass 
upon. It is a common expression 
that the Patent Office is the guar- 
dian of the interests both of inven- 
tors and the public ; and this is true 
so far as its meaning refers to the 
exercise of careful and impartial dis- 



26 



crimination and judgment in pass- 
ing upon claims of invention. 

It is the duty of the Office to give 
the patent asked for, if the claimant 
appears entitled to it, or to give him 
information as to any facts which 
may appear to render the claim 
made inadmissible. The rest may 
well be left to the inventor himself, 
for he is to be dealt with as an in- 
telligent man, capable of taking care 
of his own interests, and not as an 
incompetent under wardship. 



CHAPTER VI. 

BENEFITS OF AN EXAMINING 
SYSTEM. 

Official figures show that in the 
year 1870 to a little more than 
19,000 applications made, the num- 
ber rejected was nearly 5,000. 

What saving of time, and money, 
and labor, that might otherwise have 
been thrown away in fruitless enter- 
prise or litigation, is here repre- 
sented, what value in protection to 
the respectability and consequent 
value of patent property in general, 
is represented by the withholding in 
one year of hundreds of patents, 
which, granted, would not have been 
worth the paper on which they were 
• printed. 

We may point to another effect of 
an examining system, and hardly 
less beneficial ; we allude to what may 
be termed its advisory and restrain- 
ing effect. It is the very clear interest 



of inventors to claim all that they 
imagine themselves entitled to, and 
this is exceedingly likely to be more 
than in fact they are entitled to. 
Claims often include with that which 
is new, that also which is old, and 
either public property or the prop- 
erty of some prior patentee. No can- 
did man, having experience in these 
matters, will deny that the admin- 
istration of the examining system 
has worked almost incalculable 
good to applicants, to patentees, and, 
to the public, in pointing out and 
checking these unwitting or deliber- 
ate intrusions upon public or appro- 
priated ground, and indicating the 
real bounds of invention. This 
service has protected the interests 
of many a patentee, has thrown 
much needed light upon many an 
inventor's path, has tempered his 
too buoyant anticipations before 
they had led him into expenditures 
and enterprises, which blindly pur- 
sued, would have resulted in com- 
plications, loss, and bitter disap- 
pointment, and in every such saving 
to inventors is reflected a saving to 
the public. 

And there is still another benefit 
necessarily proceeding from exam- 
ination, a benefit of such importance 
that it might in itself be deemed 
an offset to many mischiefs. We 
refer to the necessity for clear 
and full specifications, and precise 
claims. 

The scrutiny which, in examina- 
tion, descriptions and claims un- 
dergo, must act as an eftectual curb 



27 



upon carelessness, duplicity, and 
vagueness in their preparation. An 
applicant must, in his own interest, 
be frank and precise in his state- 
ments, and thus a general correct- 
ness is engendered, the importance 
of which to public and private in- 
terests cannot be overestimated. 
There cannot be in American pat- 
ents that indefiniteness or vague 
generality of description and claim 
which is so conspicuous in many 
foreign patents, and which at once 
requires litigation to unravel, and 
renders litigation tedious, expen- 
sive, and unsatisfactory. 

And who can estimate the value 
of the Patent Office records, under 
the examining system, in respect to 
the light which they serve to throw 
on the legal status and the commer- 
cial value of patents ? Upon every 
patent Issued, the record of the ap- 
plication, of the rejections it may 
have met, the reasons for these re- 
jections, the references given to prior 
inventions, forms a compact com- 
mentary, which, while at times it 
may only show how singularly 
at fault the oflEicial judgment has 
been, is yet calculated to be of in- 
valuable service in aiding and guid- 
ing those who may desire to judge 
for themselves to what extent the 
value of a patent is affected by what 
has gone before. 

Nor will it escape the notice of 
the impartial critic that the admin- 
istration of the examining system, 
with all its imperfections and short- 
comings, has done very much to 



give to patents, as was intended, a 
higher legal and commercial status 
than they have in any other coun- 
try. That is certain, which can be 
made certain, and every aid to ar- 
riving at certainty is of moment. 
How much of that all-important ele- 
ment, certainty, must be given to 
patent property by the means of ar- 
riving at it which the Office records 
furnish ! 

There can be no doubt that the 
moral weight, the weight of pre- 
sumption which letters-patent here 
carry with them into the courts, 
and among that portion of the pub- 
lic who have any understanding of 
the Patent System, has done very 

j much, not only to simplify and 
economize, but to cut off litigation 
by inspiring confidence on the side 
of right, and caution upon that of 
wrong. 

Nor has this moral power as we 
may term it, of patent property, de- 
creased, as, if the administration of 
the examining system were on the 
whole a failure, it must have done, 
in proportion to the marvellous in- 
crease in the quantity of such prop- 
erty existing, although it has 
doubtless fluctuated with the ap-' 
parent competence and honesty, or 
their opposites, in the ruling powers 
at the Patent Office. 

The Patent OflBce is a very exten- 
sive institution, in which is collected 
a vast amount of material, rapidly 
augmented by constant accessions. 
This fact has led many to regard 

[ the organization as one which if 



28 



not already cumbrous and unwieldy, 
must speedily become so, and alarm- 
ing pictures have been given of the 
tremendous accretions of matter. 
It is asked how is it possible for 
men to conduct searches with speed 
and certainty amidst such records. 
Much has already been done to 
solve the question, by division of 
material and labor, by reducmg the 
records to compact and accessible 
shape, and by elaborate classifica- 
tion, and no doubt experience will 
suggest further improvements in this 
direction. Ixhere is in truth no 
organization so large or complex, 
that a spirit of system and order 
cannot mould it into a simple and 
smoothly working unit.\ When 
the same correct principles have 
been applied to the arrangement of 
duties which have already worked 
such wonders in the arrangement 
of material, the Patent Office will 
become an example of efficiency and 
order and uniformity of action. 

CHAPTER YII. 

THE EXAMINING SYSTEM AS 
VIEWED FROM ABROAD. 

While upon the subject of an ex- 
amining system it will not be out of 
place to see how it is regarded 
abroad, since the foreign views of 
the subject have been largely gov- 
erned by observance or report of the 
effect of the system as administered 
in this country. 

We have already had occasion to 
refer to some of the peculiarities and 



defects of the English Patent Sys- 
tem, which have recently attracted 
great attention. The subject has 
been much discussed both in and 
out of Parliament, and committees 
of inquiry have had before them the 
testimony of many promment men, 
whose position, in respect to the 
practical arts, or whose legal attain- 
ment entitle their opinions to great 
consideration. 

The defects of the present Enghsh 
system are generally acknowledged, 
and seem to have divided those tak- 
ing part in the discussion into two 
parties : 1. Those who would abol- 
ish patents altogether, and 2. Those 
who, favoring patents, yet perceiv- 
ing the deficiency of the present 
laws, proposed a variety of remedial 
measures. 

Of the former parties the number 
is not large, nor the reasoning such 
as to carry any weight with it. 

Apart from the great cost of pat- 
ents, the one great deficiency of the 
law, admitted on all sides, lies in the 
practically indiscriminate and un- 
controlled issue of patents, which 
leaves bond fide inventors at the 
mercy, to a great extent, of unscru- 
pulous pirates, and opens the door 
to patents for merely pretended in- 
ventions, or for absurd and imprac- 
ticable schemes, and of patents with 
insufficient, vague, and deceitful 
specifications and claims. Still 
worse, — there is no check upon the 
repeated patenting of similar inven- 
tions, and the rights of patentees 
are left in a cloud of darkness which 



29 



litigation alone can break ; this last 
evil being aggravated by insufficient 
means for trying patent causes. 

The various remedies proposed 
agree in this, — that they all point to 
some mode of controlling the issue 
of patents, and the establishment of 
some special tribunal to deal with 
patent questions. As to the precise 
mode by which, and the time when, 
the ends aimed at should be at- 
tained, there seems to have been 
some difference of opinion. 

Of course in a discussion of this 
kind our examining system did not 
escape attention, and its merits and 
defects, real or supposed, were freely 
canvassed. 

It is worthy of note, however, that 
those who advocated the adoption 
in England of a system more or less 
analogous were men whose opinions 
were entitled to the greater weight, 
as they spoke from personal obser- 
vation and experience. 

Among these was Mr. Aston, a 
prominent barrister, who, after can- 
vassing the defects of the English 
law, proceeds to suggest certain 
remedies ; and speaking of them as 
being not merely speculative, but 
such as had been tried, thus re- 
marks : "Those to which I attach 
the most importance have been fully 
tried in the United States of Amer- 
ica, and found to work well. I mean 
the exercise of discrimination in the 
grant of patents, and what is still 
more important, the deposit be- 
fore a patent is granted of a pre- 
cise description of the invention and 



claims, given in a complete specifi- 
cation, which is submitted to a 
proper official examination before 
it is passed as sufficient. My own 
opinions upon the working of the 
American Patent Laws are founded 
upon a personal investigation of the 
sj'stem adopted in the United States, 
and from continued experience gath- 
,ered in professional practice. My 
conviction is that the American sys- 
tem, though it has its imperfections, 
does work better than ours, and that 
because it has cured in a great meas- 
ure the defects under which our sys- 
tem is still laboring.''^ 

Mr. J. Howard, an inventor, man^ 
ufacturer, and a Member of Parlia^ 
ment, while replying to the argument 
of those who would abolish patents 
altogether, remarked, that it ap- 
peared to him, that most of the ar- 
guments that had been urged did 
not touch the principles of a patent 
law, but went rather to the defects of 
the existing law and its admmistra- 
tion. Mr. Howard took occasion to 
allude to the great and favorable im- 
pression which had been made on his 
mind by a visit to the United States 
Patent Office. He referred to the 
vital necessity for amendments in 
the English law, and expressed the 
hope that when the subject was 
taken in hand by the law officers of 
the Crown, they woxdd provide the 
means for a bond fide examination of 
all inventions before patents were 
granted; and also provide that the 
specification should be so clear that 
the public may know what really the 



80 



patent teas granted for, and thus save 
the ruinous cost of legal proceedings. 

Lord Romilly, Master of the Rolls, 
while among those inclined to the 
abolition of patents, on the theory 
that they had little to do with the 
progress of art and civilization, sug- 
gested as a remedy for the present 
inefficient state of the laws, " the ap- 
pointment of a special tribunal of 
thoroughly efficient men, who should 
examine and pronounce upon all 
applications for patents, and grant 
them according as they might think 
the invention new and useful ; or 
withhold them if the application 
was for what was trivial, worthless, 
injurious, or not new." 

Still another advocate for the 
adoption in England of an examin- 
ing S3'stem analogous to ours was 
found in the person of Mr. Mundella, 
himself a manufacturer of wide re- 
pute, and who has been a visitor in 
this country. 

Of course argument against the 
adoption of such a system was not 
^ wan ting. Reference was made to re- 
marks proceeding, it would appear, 
some time ago, from Mr. Woodcroft, 
the accomplished Chief Clerk of the 
English Patent Office, whose invalu- 
able services in superintending the 
publications of that office have gain- 
ed him a well-earned repute. But Mr. 
"Woodcroft's objections to an exam- 
ining system seem to have been 
singularly unhappy in the supposed 
facts upon which they are based. 

Said Mr. Woodcroft, "The Amer- 
icans pay about £23,000 a year for 



preUminary examination, and they 
are very much dissatisfied with it. 
The system of preliminary examina- 
tion has been tried and found want- 
ing. It is in operation in Prussia, 
but does not give satisfaction. It 
was tried in France, Austria, Sar- 
dinia, and Belgium, but being most 
unsatisfactory, was abandoned in 
each country. It is now going on 
in America at an enormous expense, 
and the Chief Commissioner (?) 
wrote to me to say that it was a very 
inadequate system, and a very un- 
fair one." 

These remarks of Mr. TToodcroft's 
have been frequently quoted by op- 
ponents of the American examining 
system, and much greater impor- 
tance has been attached abroad to 
the dictum of an ex-officer of our 
Patent Office, who is styled a Chief 
Commissioner, than we should be 
wiUing to accord to it here in view 
of the overwhelming opinions of our 
best authorities in favor of an ex- 
amining system. 

But we find Mr. Woodcroft, at a 
more recent date, saying: "Let 
every man have his patent, but be- 
fore action is brought let the origi- 
nality of the claim of the invention 
be sifted by the most competent men 
of the day," a theory to which we 
shall have occasion to refer to here- 
after. 

That in Prussia the system should 
have been a failure, no one will won- 
der when he reads the testimony of 
Mr. Bessemer, who speaks from ex- 
perience of the honesty and benevo- 



31 



lence of the working of the Prussian 
system, in regard to foreigners at 
least. Mr. Bessemer says that he 
did not take out a patent for his in- 
vention in Prussia, and explains the 
reason thus : "He sent his paper to 
Prussia in the care of Mr. Krupp, 
who paid him £5000 for the use of 
his patent. He applied in due 
course for a patent, and was in- 
formed by the Prussian Patent 
Office that the invention was not 
new. The Prussian Patent Office 
grant occasional patents ; they take 
the fees and the drawings from 
British inventors in any case, and 
afterwards publish them for the 
benefit of Prussia. The Office said 
that Mr. Nasmyth was the inventor 
of the process ; Mr. Nasmyth said 
he was not. They next said they 
would give the name of the real 
man in a few days. Six weeks 
passed, and they said, ' If we don't 
find the name of the real man to- 
morrow, we will give you a patent. ' 
A week of these to-morrows passed, 
after which they showed an English 
hlne-hodk withhis own invention pub- 
lished in it, and they said, ^Your 
invention is published^ so according 
to the law of Prussia we cannot grant 
you a patent."* All the time they 
had been promising to grant it. 
The process is now worked very 
largely in Prussia." 

It is to be hoped indeed that this 
was an extreme case in the working 
of the Prussian system, but it is a 
well-known fact that that system is 
utterly arbitrary both as to end and 



means, which is to say that it is nec- 
essarily and essentially a failure. 

The example of Prussia, then, 
was a singularly unhappy and in- 
applicable argument against the 
adoption of a system of examination 
suited to a free country. 

As to the failure of examining 
systems in Prance, Augtria, Sar- 
dinia, and Belgium, in the absence 
of express information as to princi- 
ples and details, the means adopted 
for carrying them out, or the extent 
of trial given them, it is not of course 
possible to examine into the causes 
of failure, but it would doubtless be 
found in the existence of some ar- 
bitrary features in either end or 
mode. 

Keturning to Mr. Woodcroft's 
theory, it will be seen that he is not 
opposed to an examining system, 
but to our system of examination iii 
advance of the grant; he would 
grant any man a patent for any- 
thing, but before the patentee could 
exercise any rights against infringers 
of his patent, the latter must be sub- 
mitted to the scrutiny of the "mosi 
competent men of the day.'''' If an 
examination is to be made, why 
should it not be in advance of the 
grant, so that the deed itself may be 
'prima facie evidence of the paten- 
tee's rights ? Why should one 
branch of the government indiscrim- 
inately grant patents for another 
branch to scrutinize before the pat- 
entees can go into court, or can 
go before the public with any ascer- 
tained rights ? Why postpone lock- 



32 



ing the stable door till after the 
horse is out ? 

Curiously enough, ideas somewhat 
similar to Mr. Woodcroft's have 
prevailed, but to a very limited ex- 
tent, in this country. 

It has been proposed to continue 
an examining system, and if the 
Office refuses a patent to let the ap- 
plicant take one on his own respon- 
sibility, the patent however to be 
accompanied with the taint of offi- 
cial refusal. 

Of what earthly use would such 
a patent be to the holder, who would 
be in a position analogous to that of 
the man who bases his ownership to 
real estate on a deed either invalid 
on its face, or bearing such a taint 
that it is worthless ? 

Argument against the American 
system was also found in an article 
coming at secondhand from the 
columns of the "New York Trib- 
une," quoted in other papers, both 
here and abroad. 

This was the article to which we 
have had occasion to refer in an 
earlier part of this treatise as show- 
ing such an entire and singular 
misapprehension of the true prin- 
ciples of our system. The article 
animadverts upon the dangerous 
power exercised by our officials in 
pronouncing upon the novelty and 
VALUE of inventions; — "Power," 
says the article, "which the best 
functionaries might abuse through 
defect of information, or error in 
judgment, which the worst certainly 
will and do use most unrighteously. ' ' 



That the law does not authorize 
inquiry into the value of inventions, 
we have shown, and as to the in- 
quiry into novelty, is not the exer- 
cise of power in this respect suffici- 
ently prevented, by the very nature 
of the inquiry, by the rights of the 
applicant to full information as to 
any cause of rejection, and by his 
right of appeal, from being improp- 
erly and unjustly exercised ? 

What must have been the sur- 
prise of those Englishmen who so 
keenly appreciated the evils of their 
patent system that they desired any 
mode of getting rid of it, even by 
the total abolition of patents, if no 
other way could be devised, to find 
this article gravely arguing that 
"our patent laws should be assim- 
ilated to the British ; that the Pat- 
ent Office should here, as there, 
simply register claims to have made 
inventions or discoveries in their 
order, and all questions thence aris- 
ing should be taken to the courts 
and there settled." 

Such a proposition as this must 
have given rise to the thought that 
the American examining system 
must be bad indeed, if it warrants 
the presenting to American in- 
ventors of this alternative as pref- 
erable. 

The delightful results as they 
have been experienced in England, 
of treating property in invention as 
a bone to be carried off in triumph 
by the lucky winner among those 
who choose to fight for it, may be 
gathered from the testimony of Mr. 



33 



Kasmyth, the well-known inventor 
of the steam-hammer. "He had 
been called as a witness in patent 
cases, and had seen much of the ad- 
vantages and disadvantages of pat- 
ent litigation. He thought there 
was a natural tendency to partisan- 
ship among scientific witnesses, and 
had felt this tendency to become an 
advocate rather than a witness. 
His steam hammer had been in- 
fringed, but he took a commercial 
view of the matter. He had seen 
so 'much of the enormous expense of 
litigation that he had always resolved 
to submit to any infringement rather 
than fight a battle at law.''^ 

Mr. Webster, a prominent barris- 
ter, characterized patent litigation 
as "nothing but speculations on the 
part of the litigants on the ignorance 
of the judge and jury ; a jury is often 
very ignorant, and a judge more ig- 
norant than all of them." 

Other prominent and experienced 
men testified to like effect. 

When we take into consideration 
the ambiguous character of many 
English patents, and the absence of 
definite claims, the ignorance of 
judges and juries is not much to be 
wondered at. In this country, how- 
ever, a well-defined claim is de- 
manded before the patent can issue; 
and in litigated cases the matters 
to be adjudicated on come before 
the courts in such a shape that the 
judges, assisted by intelUgent wit- 
nesses, are very rarely at a loss to 
understand the invention. 

Patent litigation in this country 



is not so costly, nor so unsatisfac- 
tory, as in England, and this fact 
may be very largely attributed to the 
efiect of our examining system, in 
reducing and simplifying the ques- 
tions coming before the courts. But 
evils, like in kind if not in degree, 
attend such litigation here, neces- 
sary evils where judges are called 
amidst other duties to deal with a va- 
riety of mechanical subjects, of which 
it is not to be expected that they 
have personal knowledge, so that 
they must arrive at their conclusions 
by such fight as the adverse argu- 
ment of counsel and testimony of 
experts may throw on the matter. 

There is, perhaps, more patent 
litigation in this country than in 
England, as there are also very 
many more patents, the annual 
number of patents granted being 
not less than five times more nu- 
merous. But it may be gathered 
from the testimony of Mr. IsTasmyth 
and of others, that in England pat- 
ent litigation is governed not at all 
by the number of patents, but by 
the wealth and courage of patentees. 
There is likely to be little litigation 
when it is so expensive as to task 
the purse of a rich man, and so un- 
certain that both poor and rich are 
likely to prefer quiet submission to 
injustice rather than resort to the 
courts. It is the characteristic of the 
English patent system, to the known 
evils of which the sage newspaper 
article we have quoted would have 
us flee from the imaginary evils of 
our own, that in leaving the validity 



34 



of a patent, as a title-deed, an open 
question upon whicli litigation alone 
can throw any light, it makes litiga- 
tion so terrible an ordeal, that soon- 
er than invite it, most ordinary 
mortals would be content to have 
their rights remain forever unde- 
fined and unrespected. 

We fancy the most inveterate and 
unreasonable grumblers would re- 
gard an exchange of our own for 
this sj'stem as a jump out of the fry- 
ing-pan into the fire. 

Patent litigation must always, 
from the very nature of the subject, 
be costly ; the least that can be done 
then, in justice to inventors, is to 
insure that they may enter upon it, 
when necessary, with a tolerable de- 
gree of confidence and certainty, that 
they have something to stand upon. 

One of the remedies proposed by 
those who understand the subject 
best, for the present state of patent 
property in England, is the estab- 
lishment of special tribunals for the 
trial of patent causes, in which the 
judges shall have the assistance of 
impartial experts upon practical sub- 
jects. This, perhaps, is something 
which might be considered to ad- 
vantage here. It certainly holds 
out the prospect of giving patentees 
the benefit of the most intelligent 
and satisfactory adjudication of their 
rights. 

But this is only a secondary 
matter. Among inventors and their 
advisers there must be many who 
will be disposed, in drawing up de- 
scriptions and claims, to adopt the 



maxim that "language was made 
for the concealment of thought," 
and this tendency must be aggra- 
vated if patents are so loosely 
granted, and there is such uncer- 
tainty and risk attending them as 
to lead to a general impression that 
vagueness and generality of language 
may be of service in furnishing some 
ground, however small, to stand 
upon. In this way patents become 
an abomination and a snare, both 
to inventors and to the public. 

Such has been the experience in 
England ; the result of allowing 
patents to issue without proper ex- 
amination, without ascertaining whe- 
ther the specifications and claims 
he clear, precise, and well defined, is 
thus graphically stated by Mr. 
Aston: "Patentees complain that 
they have not sufficient protection 
for their property, and the public 
complain that they cannot defend 
themselves from the patent. There 
are some intelligent patent agents ; 
there are also some who are not so. 
It is very commonly the case that 
an uninformed man goes with his 
invention to an uninformed patent 
agent for assistance ; the patentee in 
the latter case is frequently tempted 
to put in a very wide claim, or one 
capable of a yerj wide interpretation. 
He, therefore, does not as a rule find 
out the real value of his title-deed 
till he goes into court with it ; there, 
for the first time, it undergoes strict 
examination hy the judge on the hench, 
which is an ordeal which very few 
specifications can siand." 



35 



All this gives point to what we 
have said in the preceding chapter 
as to the important beneficial effects 
of our previous examination in com- 
pelling clearness and precision in 
the drawing of specifications and 
claims. 

To overcome these evils, Mr. 
Aston suggested that there should 
be an ofiicial examination of the 
document which constitutes the title- 
deed ; he thought that the examiner 
should be a lawyer, assisted by per- 
sons with technical knowledge. 

Mr. Webster, an eminent Queen's 
counsel, says, alluding to the duties 
which the law officers of the Crown 
under the present system, are called 
upon to perform : ' ' The law officers 
do not obtain a sufficient description 
of the nature of inventions in prac- 
tice ; they are not competent to deal 
with such subjects ; they cannot give 
the requisite time, and they know 
nothing about mechanical details. 
A law officer is the very worst per- 
son to discharge the duties for which 
he is appointed." The act of 1852 
made it optional whether they should 
call in scientific aid, but generally 
he believed, they call in no such aid. 
Every application for a patent should 
he examined hy some one competent 
person who thoroughly understands 
the subject of the patent. If an in- 
vention had been patented before, 
the applicant for the patent should 
be informed of it. 

In a Parliamentary debate on the 
subject, Mr. Carr, M. P., said, "his 
impression was that at the root of all 



the mischief of the present patent 
law lay the want of a proper tribunal, 
the members of which, combining 
legal and special knowledge, should 
refuse patents which ought to be re- 
fused.'''* 

Another member of Parliament 
stated his belief that "if the patent 
laws were to be maintained, it was 
necessary that there should be, in 
the first place, an examination to 
ascertain that the invention was new, 
that it ions sufficiently described, and 
that it was useful.''^ 

Still another well-known Queen's 
counsel, Mr. Grove, stated that " he 
was in favor of the establishment of 
a special patent tribunal armed with 
the power of granting or refusing 
patents on the ground that they are 
or are not for novel inventions." 

Other important evidence to like 
effect might be cited, but we have 
given enough to show that among 
those learned and experienced Eng- 
lishmen who have given their atten- 
tion to patent law reform, there is a 
singular unanimity in the belief that 
discrimination in the grant of pat- 
ents is of vital necessity, and it may 
be noted that those are the most ur- 
gent in advancing this theory who 
have had opportunity for practical 
observation of the exercising of such 
discrimination in our own country. 

We see the evils of the want of 
such discrimination forcibly repre- 
sented : patents granted with vague 
and indefinite specifications and 
claims ; patents for old or for use- 
less things, and for things already 



36 



patented; patentees left to ascer- 
tain in the courts the nature and 
extent of their rights, and 3'et afraid 
to resort to tlie courts, so that both 
l^atentees and pubUc are left in doubt 
and perplexity as to what the major- 
ity of patents are for, whether they 
cover much ground or little, whether 
they are valid or worthless. 

Surely such a state of affairs as 
this is infinitely worse and more un- 
bearable than any evils which have 
been or can be engendered by our 
examining system. 

One of the most prominent objec- 
tions advanced in England to the 
adoption of an examining system 
analogous to our own is the demand 
which the system is supposed to re- 
quire for highly scientijic officers, and 
the supposition prevails here to 
some extent that the officers of our 
own Patent Office are or should be 
highhj scientijiG men, and not unfre- 
quently positions in that Bureau are 
sought on the strength of no other 
qualification than an assumption of 
philosophical knowledge acquired 
by cramming at our schools and 
colleges. 

We cannot conceive a more disas- 
trous event than the filling of our 
Patent Office with quasi philoso- 
phers. 

Forty-nine fiftieths of all the ap- 
plications for patents are based on 
absolute facts, to be best dealt with 
practically by matter-of-fact men, 
who can bring to bear good general 
and practical knowledge, and pow- 
ers of discrimination and concentra- 



tion, without being biased by pet 
theories of their own. 

Purely theoretical knowledge ac- 
quired apart from practice is treach- 
erous, and standing alone is but 
poor capital for an officer of the Pat- 
ent Office. There have not been 
wanting instances of theoretical ex- 
aminers declaring machines and ap- 
paratus to be inoperative and im- 
practicable which have been sliown 
to be in every-day successful opera- 
tion. Whatever science or skill may 
have been exercised in the produc- 
tion of an invention, the application 
for a patent goes before the Office, 
or rather should do, in a dry matter- 
of-fact condition, and may be better 
examined by a man of shrewdness, 
tact, and practical knowledge, than 
by one who can only bring theoreti- 
cal lore to bear on the duty. Pew 
theorists think alike, and their ef- 
forts to elucidate a simple subject 
often result in confusing it, precisely 
as scientific experts in poisoning 
cases, and in not a few patent 
cases, by their opposite views, fre- 
quently succeed in confusing judges 
and juries, and in obscuring the 
truth. 

There are classes 01 mventions 
which demand from the Examiner 
a degree of scientific knowledge, but 
the more practical experience this 
knowledge may be combined with 
the better will the duties be per- 
formed. 

We cannot but think that the 
alarm in England concerning the dif- 
ficulty of obtaining efficient officers 



37 



wherewith to carry out an examin- 
ing system is a false alarm. 

To say that an examining sys- 
tem gives discretion to officials, 
which good ones may abuse through 
error or mistake of judgment, and 
which bad ones will abuse delib- 
erately, is merely to say what is 
equally true of any system of legal 
administration depending to any 
extent upon the discretion of man. 
If we are to abolish any system 
in which official discretion is ex- 
ercised, because good men are not 
infallible and bad men will do mis- 
chief, what branch of government 
can we permit to survive? To 
apply such an argument to the 
examining system is to say that a 
system proper in its theory and 
beneficial in its aim is bad for the 
want of capable and honest men to 
carry it out, an argument to which 
we think few of our readers will be 
willing to subscribe. 

"We have shown that the discre- 
tionary power which the examin- 
ing system does confer on those who 
carry it out, is so limited and well- 
defined that if placed in the hands 
that the law intended it should be, 
the chances of injurious abuses of it 
are small indeed. 

"We have shown how beneficial 
the system has been, even admitting 
it to have been but imperfectly ad- 
ministered, how grossly its defects 
have been, from natural causes, ex- 
aggerated, wherein the real defects 
lay, and what kind of changes will 
be likely to remove those defects. 



We have brought proof, too, of 
the evils ensuing from the lack of 
such a system. 

We believe that our readers, can- 
didly weighing all sides of the ques- 
tion, will coincide with us in the 
belief that the examining system 
whatever may have been the defects 
of administration, has been, upon 
the whole, of incalculable benefit 
both to inventors and the public, 
that its abolition would be a great 
misfortune, a signal for the reduc- 
tion of patent property to a state 
of confusion, and that earnest en- 
deavors to improve the organiza- 
tion of the Patent Office, in those 
respects wherein it very evidently 
may be improved, will do much to 
make the system as successful in 
practice as it is beneficent and just 
in theory. 

CHAPTER YIII. 

REMEDIES FOR DEFECTIVE 
PATENTS. 

Haying in the preceding chapters 
discussed as fully as our proposed 
limits will allow, the examining sys- 
tem, peculiar in its character and 
intent to our law, we will now turn 
attention to other provisions, which 
will be found to be equally endued 
with the spirit of justice and liber- 
ality to inventors. 

With a patent granted to him 
after an inquiry into the novelty 
and utility of the invention claimed, 
the patentee may come before the 
public with a reasonable confidence 
that his title-deed is clear and dis- 



38 



tinct, and should infringements 
upon his patent oblige him to resort 
to a court of justice, he will in doing 
so, have the legal and moral benefit 
of a prima fade presumption of 
the validity of the right he seeks to 
vindicate. 

Inventors have at times erro- 
neously supposed that the grant of 
a patent after the examination as to 
novelty and utility is conclusive 
upon those questions, and that a 
patent is a guarantee of the novelty 
and utility of the invention claimed 
therein. This, of course, is a mis- 
take. An application for a patent 
is an ex parte proceeding, of which 
the public at large know nothing. 
That this should be so, is essential 
for the protection of the interests of 
inventors, If before the grant of a 
patent, the particulars of any claim 
of invention should be allowed to 
become matter of public notorie- 
ty, very mischievous consequences 
would be likely to follow. 

There are never wanting unscru- 
pulous and narrow-minded men, who 
if allowed the opportunity would 
exercise all means in their power 
to impede and harass inventors and 
hinder them from attaining their 
rights. To publish applications for 
patents would be to invite conspir- 
acy and factious opposition of all 
kinds from interested parties, with 
results injurious not only to in- 
ventors, but to the peace and morals 
of society. 

It is requisite, therefore, to pro- 
vide that no claim of invention 



shall be published prior to the grant 
of a patent : till then the only 
parties cognizant of the claim are, 
as a rule, the applicant and his at- 
torney, if he have one, and the 
Patent Oflice. 

But it is an inviolable maxim 
that the rights of individuals can- 
not be bound by proceedings to 
which the individuals affected were 
not a party. 

Hence the members of the public 
at large cannot be bound by those 
proceedings in the Patent Office rela- 
tive to applications for patents, of 
which the law does not permit them 
to know, or to become parties therein. 
Any member of the public, there- 
fore, is at liberty to show by proper 
proof, if he can, in legal proceedings 
upon a patent, that the invention 
claimed therein was not new or 
original with the patentee ; that it 
is not useful, or that for other rea- 
son the patent should not have been 
granted, or is invalid. 

The patent is prima facie evidence 
in any suit, for the patentee, this 
far : that the officials authorized by 
law have after due examination 
granted the patent, as for a new and 
useful invention, which the patentee 
has sworn that he beUeves to be his 
own, and which, in the opinion of 
these officials, he has clearly and 
sufficiently set forth and claimed in 
his specification. 

But it may very well be that the 
patentee was mistaken in his belief 
that the invention was original with 
himself, or that he may have taken 



39 



a false oath, and it may also be 
that members of the public whose 
rights the patent may affect, can by 
facts and proof which were not be- 
fore the Patent Office, show that 
such was the case, or that the in- 
vention is not useful, -or that it is 
not so clearly and sufficiently de- 
scribed as to enable those skilled in 
the art to which the invention ap- 
pertains, or with which it is most 
nearly connected, to make use of it, 
from the information which the 
specification conveys. Any of these 
defences — as well as others which it 
is not to our purpose here to speak 
of, since they are fitter subjects for a 
legal than for a practical treatise — 
any member of the public is at lib- 
erty to make in a suit which a 
patentee may bring against him for 
infringement of the patent. The 
burden is upon him, however, to es- 
tablish any of such defences by clear 
and unmistakable proof, in order to 
overcome the weight of the prima, 
facie presumption which the exist- 
ence of a patent raises in favor of 
the holder. 

Mere technical defences against 
patents are not favored, but the 
courts will always so construe spe- 
cifications and claims that if possi- 
ble the patent may stand. 

While, therefore, a patent is not 
to be taken as in any sense a guar- 
antee of the patentee's rights, but 
on the contrary, any member of the 
public sued for alleged infringement 
of a patent is at full liberty to show, 
if he can, that the patent should 



not have been granted, and that 
therefore, the grant of it conferred 
no lawful right upon the patentee, 
the latter may be sure that he will 
not have to contend against hostile 
judicial criticism which would give 
a favorable ear to those technical 
pleas to which dishonest defend- 
ants will be hkely to resort. 

But though the tendency of our 
courts is to deal in a liberal spirit 
with the rights of patentees, this 
liberality of course cannot extend 
so far as to givg effect to patents 
palpably deficient in respect to any 
of the legal requirements. Litiga- 
tion not unfrequently has the effect 
of showing the patentee that his 
patent is defective in some material 
particular ; and that, therefore, his 
right under it is not such as a court 
of justice can maintain and enforce. 
If this defect lie in total lack of 
novelty or utility in the invention 
claimed, it is of course beyond rem- 
edy. But it may be that the defect 
consists in the lack of one of these 
requisites in some part only of the 
thing claimed, or merely in the mode 
in which the invention is described 
or claimed. In its liberal dealings 
with the rights of patentees, whose 
patents are thus only partially or 
technically defective, our law is dis- 
tinguished from that of any other 
country. 

Under the English law, in a suit 
for infringement of a patent, proof 
that the patent includes more than 
was new and original with the pat- 
entee, is altogether fatal to the suit. 



40 



Our statutes, however, provide 
(section 60) that if, through inad- 
vertence, accident, or mistake, and 
without any wilful default, or intent 
to defraud, or mislead the public, a 
patentee shall have claimed in his 
specification to be the original and 
first inventor or discoverer of any 
material or substantial part of the 
thing patented, of which he was not 
so, he or his legal representative 
onay yet maintain suit at law or in 
equity for the infringement of any part 
thereof which ivas bond fide his own, 
provided it shall be a material and 
substantial part of the thing pat- 
ented, and be definitely distin- 
guishable from the parts claimed 
without right, notwithstanding the 
specification may embrace more than 
that of which the patentee was the 
original or first inventor or dis- 
coverer. 

It will be noted that a patent 
which is too broad cannot under 
this section be partially effective, 
unless upon the face of the patent 
as it stands the old and the new mat- 
ter be clearly distinguishable and 
separable, and the new matter be a 
material and substantial part of the 
thing patented. If the old and new 
matter are not thus definitely dis- 
tinguishable, the patent as it stands 
is altogether bad, and no suit can 
be maintained upon it ; but such a 
state of affairs is not fatal to the 
inventor's right : he may remedy 
the error in a mode which we shall 
allude to hereafter. 

The provision in favor of pat- 



entees in the section we have quoted 
is very properly coupled with the 
condition that in such case no costs 
shall be recovered in the suit, unless 
the proper disclaimer has been en- 
tered at the Patent Office before the 
commencement of the suit ; nor shall 
the patentee be entitled to the benefit 
of the section if he shall have un- 
reasonably neglected or delayed to 
enter said disclaimer. 

This proviso is to protect the pub- 
lic against the carelessness or bad 
fixith of patentees, who might wit- 
tingly mislead and deceive the pub- 
lic by continuing to claim that which 
they themselves were aware they 
had no right to claim. 

It is the right of the public that 
no patent should purport to grant 
to the patentee more than he is 
fairly entitled to. The true extent 
of his right should distinctly appear 
on the face of his patent, that the 
public ma}^ be informed of it. 

When, therefore, a patentee shall 
have discovered that his claims in- 
clude more than that of which he 
was actual first inventor, he acts in 
bad fiiith towards the public, from 
whom lie holds his patent, if he de- 
lays to rectify the error, and reduce 
his claim to its legitimate extent ; 
and much more does he act in bad 
faith if, with such knowledge, he 
attempts to enforce submission to 
his unjust claim by proceedings in 
the courts. 

When, therefore, a patentee dis- 
covers that his patent covers more 
than that of which he was the ac- 



41 



tual first inventor, and finds that 
the old matter is definitely distin- 
guishable and separable from the 
new, he is morally bound to avail 
himself without delay of the sec- 
tion of the law which permits him to 
remedy such an error by filing in the 
Patent Office what is termed a 

Disclaimer. 

This is a statement in writing, 
signed by the party disclaiming, 
attested by one or more witnesses, 
and recorded in the Patent Office, 
making disclaimer of such parts of 
the thing patented as the party in 
interest shall not choose to claim or 
hold by virtue of the patent. The 
right to file a disclaimer is not con- 
fined to the patentee, but his heirs 
or his assigns, whether of the whole 
or of a sectional interest in the pat- 
ent, have the like right. Of course, 
when the assignee of a sectional in- 
terest makes such a disclaimer, his 
interest only is affected by it. 

But it is not every patent which 
is too broad that can be thus cured. 
The remedy of disclaimer is of course 
applicable only to cases where the 
patent specifies and claims divisible 
features of invention. The part re- 
tained and the part disclaimed must 
be clearly separable and distinguish- 
able, and the part to be retained 
must be a material and substantial 
part of the thing originally patented. 

When, therefore, the patent is not 
thus divisible, when the original 
claim is not of such character as to 
allow of a correction of the patentee's 



error by cutting out some clearly 
separable part, the removal of which 
will yet leave in the patent a ma- 
terial and substantial patentable 
subject of claim, the remedy of dis- 
claimer cannot be resorted to. 

Now there are very many patents 
inadvertently made too broad, in 
which the character of the inven- 
tion, or of the description or claim, 
would prevent any such rectifica- 
tion of the patent by mere excision. 
In such case the patentees would be 
without remedy, and would find 
themselves deprived of all right 
without default of their own, — a 
state of affairs by which very many 
really meritorious and useful inven- 
tors would be irreparably injured. 

To obviate such mischief the law 
has provided the remedy of 
Reissue. 

Tliis provision is one which has 
no parallel in any other patent law, 
and is one of those really beneficent 
measures which have tended to make 
our law so effective, because so just 
and liberal. 

Section 53 of the act provides, 
that "whenever any patent is in- 
operative or invalid, by reason of a 
defective or insufficient specifica- 
tion, or by reason of the patentee 
claiming as his own invention or dis- 
covery more than he had a right to 
claim as new, if the error has arisen 
by inadvertence, accident, or mis- 
take, and without any fraudulent or 
deceptive intention, the Commis- 
sioner shall, on the surrender of 
such patent, and the payment of the 



42 



duty required by law, cause a new 
patent for the same invention, and 
in accordance with the corrected 
specifications, to be issued to the 
patentee, or in the case of his death, 
or assignment of the whole, or any 
undivided part of the original patent 
to his executors, administrators, or 
assigns, for the unexpired part of 
the term of the original patent^ the 
surrender of which shall take effect 
upon the issue of the amended pat- 
ent.'' 

For patents which are too broad 
the remedy of reissue is applicable, 
when the defect is such as to render 
the original patent altogether in- 
operative or invalid, because the 
character of the invention, or of the 
description and claim is such that 
there is no material or substantial 
part of the thing patented, which 
being truly and justly the patentee's 
own, is clearly separable and dis- 
tinguishable in the patent as it 
stands from that which is not the 
patentee's own. In other words, 
the remedy of reissue is applicable 
when that of disclaimer is not. 

A patent which being too broad 
may yet be remedied by disclaimer, 
is not in its original condition alto- 
gether inoperative and invaUd, but, 
as we have seen, is by the terms of 
the law valid, for all that which 
being a material and substantial 
part of the thing patented is truly 
and justly the patentee's own. 

Upon such a patent, and for the 
infringement of such material and 
substantial part thereof as is bond 



fide the patentee's own, he is allowed 
to maintain a suit, because such 
part is definitely distinguishable and 
divisible in the patent as it stands 
from the parts claimed without right, 
which latter may, therefore, be re- 
moved from the patent by simple 
excision. 

But a patent which being too 
broad must be remedied by surrender 
and reissue, is inoperative and in- 
vaUd, and no suit can be maintained 
upon it, because the old and new 
matter cannot be separated in the 
description and claim as they stand ; 
no distinct part can be taken away 
and still leave a material and sub- 
stantial part of the thing patented, 
definitely distinguishable from the 
parts claimed without right. Divi- 
sion therefore being impossible, and 
since the patent as it stands, not 
being so divisible is wholly invalid, 
the only remedy is reconstruction 
of the description and claim, and 
this can be effected by way of sur- 
render and reissue. 

But it is not only as a remedy for 
patents, which, being too broad, can- 
not be cured by disclaimer, that re- 
issue is available. It is, in fact, a 
sort of universal medicine — a cure 
for all the ills that specifications and 
claims are heir to. The section we 
have quoted makes the remedy of 
reissue available whenever, through 
innocent inadvertence, accident, or 
mistake, a defective or insufficient 
specification renders the patent in- 
operative or in valid. 

The importance of this is appar- 



43 



ent when it is remembered that the 
consideration passing from the in- 
ventor to the pubhc, for which a 
patent is granted, is the making and 
disclosure of an invention. The word 
disclosure argues a full and candid 
imparting of all the knowledge nec- 
essary to enable others to carry the 
invention into effect as fully and 
effectually as the inventor himself ; 
otherwise he has not given the con- 
sideration required of him, and there- 
fore his patent is not good. Thus, in 
the words of our law, "the inventor 
is required to file in the Patent 
Office a written description of his 
invention, and of the manner and 
process of making, constructing, 
compounding, and using the same, 
in such clear, full, and concise and 
exact terms as to enable any person 
skilled in the art or science to which 
it appertains, or with which it is 
most nearly c(mnected, to make, 
construct, compound, and use the 
same. " A patent, then, is not valid 
if essential information is omitted, 
or if anything be so scantily, ob- 
scurely, or unintelligibly stated that 
the whole description taken together 
is not sufficient to guide those skilled 
in the art to a correct and beneficial 
use of the invention. How likely 
such defects are to exist where an 
uninformed inventor has attempted 
to draw his own description, or has 
employed an incompetent attorney 
to do it for him, can readily be ap- 
prehended. The right of reissue 
enables a patentee so to correct 
or amplify his description as that 



it shall present a fair and faith- 
ful performance of his contract with 
the public, and so his privilege will 
be saved to him. 

Still another end, beneficial to in- 
ventors, is served by the power of 
reissue. 

It is essential to the faithful per- 
formance by the inventor of his part 
of the contract between the public 
and himself that he should clearly 
and candidly state what it is that 
he claims to be his invention, so 
that the public may be fully advised, 
from his own statement, of the ex- 
tent of his right ; or, as the law has 
it, he must "particularly point out 
and distinctly claim the part, im- 
provement, or combination, which 
he claims as his invention or dis- 
covery." 

What is termed the specification 
comprises the description and this 
necessary claim, which latter is to 
be construed with reference to the 
description. The courts, therefore, 
thus construing the claim, will al- 
ways, if possible, give it meaning 
and effect ; and meaning and effect 
the very fullest, — consistent with 
the patentee's apparent right, — that 
by the fight which the description 
affords, they can give it. For not 
only will they endeavor so to 
construe the patent that it shall 
stand ; but, if possible, so that it 
shall be effective to protect the 
whole of the patentee's apparent 
invention. But, in doing this, 
they cannot of course go beyond 
what appears on the face of the 



44 



patent. Their liberality must be 
bounded by the actual contents of 
the specification. By a liberal con- 
struction of the whole document 
together they can give definite sig- 
nificance to an apparently obscure 
claim, or give wider meaning to an 
apparently limited claim, than if it 
were taken by itself its mere lan- 
guage would imply. But they can- 
not supply omissions, or construe 
the patent to cover that which is 
not directly or indirectly claimed. 

'Now it may happen, and fre- 
quently does happen, that an inventor 
inadvertently omits such reference 
in his description or claim to some 
material and substantial part of his 
invention as would warrant a judicial 
construction of his patent as cover- 
ing that part. This then is a case 
where the patent, by reason of a de- 
fective and insufficient specification, 
is inoperative to give an exclusive 
right to the actual invention. In 
such event the patentee may sur- 
render his patent and take a new, or 
as it is termed, a reissue patent upon 
an amended specification, which 
shall distinctly specify and claim the 
whole of the actual invention shown., 
but not claimed in the original 
patent. 

Again it sometimes happens that 
one patent has been made to em- 
brace several distinct patentable im- 
provements, each of which might 
have been made the subject of a dis- 
tinct patent, and it may become 
proper and desirable thus to separate 
them. For this the law provides 



that the Commissioner may in his 
discretion cause several patents to be 
issued for distinct and separate parts 
of the thing patented, upon de- 
mand of the applicant, and the pay- 
ment of the required fee for a re- 
issue, for each of such reissued let- 
ters-patent. 

It is carefully to be borne in mind 
that the legitimate object of a reissue 
is simply to correct that wherein the 
original patent was defective, more 
fuUy or correctly to describe or claim 
the whole of that invention which 
the original patent should have de- 
scribed or claimed. The words of 
the law are that the Commissioner 
shall, on the surrender of a patent, 
and payment of the required duty, 
cause a new patent for the same in- 
vention, and in accordance with the 
corrected specifications, to be issued; 
and it is distinctly provided that no 
new matter shall be introduced into 
the specification. This term, new 
matter, has reference not to mere 
language, but to substance. Such 
changes or arapUfications of language 
may be made as are necessary to 
effect the legitimate object, the cor- 
rection of that wherein the original 
patent was defective, whether in de- 
scription, or in claim. But no new 
or changed feature of invention can 
be introduced, because the reissue 
patent is to be for the identical 
thing which constituted the actual 
invention of the patentee iclien he 
applied for his original patent, and 
for which that patent would then 
have been granted had the descrip- 



45 



tion or claim not been defective or 
insufficient. 

Tlie nature and object of reissues 
have been greatly misunderstood, 
and what is intended as a remedial 
measure in favor of the rights of 
inventors was, until very recently, 
oftentimes perverted into a means 
for unlawfully stretching the ap- 
parent scope of patents beyond the 
true invention, and thus imposing 
upon and injuring the public. 

This was effected, sometime^ by 
basing upon such rudimentary traces 
of important principles as might 
be found in a patented invention, 
broad and sweeping claims couched 
in language designed, in effect, to 
cover any known application of such 
principles to a like purpose, and 
sometimes by a deliberate interpola- 
tion in the amended specification of 
new matter not to be found in the 
original patent at all. 

Under careless and incompetent 
administrations this evil practice 
grew, until it had assumed alarming 
proportions. ISTo sooner did a patent 
for some really useful invention be- 
come remunerative, and so draw 
attention, than it became the object 
of the greedy and unscrupulous to 
find some old patent worthless in 
itself, and purchasable for a song, 
but in which might be found some 
rude embryonic traces of the princi- 
ples involved in the valuable patent. 
Then a reissue was obtained, and 
all the ingenuity of language was 
called into play to give this reissue 
the apparent effect of anticipating 



and covering whatever was valuable 
in the later patent. This species of 
reissue became a weapon wherewith 
to embarrass and levy blackmail 
upon meritorious patentees and 
manufacturers, and either to cut off 
or compel a division of the hard- 
earned fruits of their ingenuity, or 
of their enterprise and invested 
capital. 

This had the effect too of casting 
a taint of suspicion upon reissues 
generally, to the great injury of 
bond fide meritorious inventors. 

It was found necessary to cast 
some restraints upon the grant of 
reissues, so as to put a stop to this 
mischievous practice. 

Whereas, therefore, previous to 
the passage of the last act (July, 
1870), reissues might be obtained by 
the assignees of patents without 
any reference to the original pat- 
entees whatever, it is now required 
by Sec. 33, that though patents may 
be reissued to assignees, yet the ap- 
plication must be made, and the 
new specification sworn to by the 
inventor or discoverer, who may 
reasonably be supposed to know 
best what his own actual inven- 
tion was, and to be the least likely 
person to make false or rash rep- 
resentations in regard thereto, 
while the doubt whether the pat- 
entee will prove a complacent tool, 
must tend greatly to check and 
lessen the speculation which for- 
merly traded in old patents, for no 
better purpose than the obtaining 
of brummagem reissues. This pro- 



46 



vision, however, is not applicable to 
patents assigned previous to July, 
1870. This requirement of the law 
has been somewhat complained of, 
on the ground that it places as- 
signees of patents too much at the 
mercy of patentees, and enables the 
latter, should they be so disposed, 
to levy blackmail upon those who 
have already paid them for the prop- 
erty, the title to which it may be 
found necessary to better by reissue. 
There may be some ground for this, 
but the apprehended evil seems to 
be one which the exercise of proper 
discretion and care will prevent. 
More caution than was formerly ex- 
ercised by purchasers of patents 
will certainly be required under the 
present state of the law : this, how- 
ever, is a material advantage, for 
the caution required of purchasers 
must necessarily reflect itself in 
greater caution upon the part ot 
patentees in the mode of obtaining 
their patents, since imperfect patents 
will be found less available com- 
mercially. 

The same causes (the creation of a 
spirit of inquiry and discrimination 
as to patents) which will check the 
trading in patents for mere specula- 
tive purposes, will ultimately serve 
to check, to some extent, at least, 
the practices of that class of men, 
who, under too lax a state of the 
law, undeservedly flourish, and who 
may be termed professional pat- 
entees ; men who, without any merit 
as inventors, find in small patents 
a ready means of supplying their 



pockets, at the expense of the pub- 
lic. While it would be impolitic 
and wrong to make any distinctions 
as regards title to the benefit of 
the ipatent law, between inventions 
of different degrees of apparent im- 
portance, it is both politic and 
right to establish any measures 
which will be likely to raise the 
general standard of patents in point 
of legal value. Tliis is not more to 
the interests of the public, than it 
is t© the true interest of bond fide 
inventors. Any measure, there- 
fore, which, while it does not tend to 
work any real hardship to patentees 
or patent owners, yet tends to im- 
press upon inventors the necessity 
in their own interest of exercising 
circumspection in drawing their 
specifications, is beneficial, and as 
such a measure may this touching 
reissues be regarded. 

When the patent has been as- 
signed, and there are several as- 
signees, they must all be assenting 
parties to an application for a re- 
issue. 

It is also distinctly specified by 
the letter of the last act that "no 
new matter shall be introduced into 
the specification ; nor in case of a 
machine patent shall the model or 
drawings be amended, except each 
by the other." 

This proviso, however, is added : 
" But, where there is neither model 
nor drawing, amendments may be 
made, upon proof satisfactory to the 
Commissioner that such new mat- 
ter or amendment was a part of the 



47 



original invention, and was omitted 
from the specification by inadver- 
tence, accident, or mistake, as afore- 
said." 

The wisdom of this last provis- 
ion, or of the admission under any 
circumstances of extrinsic evidence 
in applications for reissue, may be 
doubted. Bond fide cases for the 
exercise of this rather sweeping dis- 
cretion by the Commissioner, must 
be comparatively very rare, and the 
measure might seem fairly obnox- 
ious to the charge of extending 
temptation for much misrepresenta- 
tion and imposition, without the 
likelihood of working any very ma- 
terial measure of justice. 

As a further necessary check upon 
the grant of reissues, the law re- 
quires that applications therefor 
shall be subject to revision and re- 
striction, in the same manner as 
original applications are. 

As the surrender of an original 
patent does not take effect until the 
issue of the amended patent, if ap- 
plication for the latter be refused 
and withdrawn, the original remains 
in force. 

It is provided that a reissue 
patent, with its corrected specifica- 
tion, shall have the effect and ope- 
ration in law, on the trial of all 
actions for causes thereafter arising, 
as though the same had been origi- 
nally filed in such corrected form. 
Of causes of action under the origi- 
nal patent, the surrender and reis- 
sue, since it involves a distinct 
avowal by the patentee that such 



original patent was inoperative and 
invalid, is of course an abandon- 



ment. 



CHAPTER IX. 



^ GEIsTERAIi FEATTTRES OF THE 
UNITED STATES PATENT LAWS. 

In this, our concluding chapter, 
we shall refer briefly to those pro- 
visions of our patent law which in 
the preceding chapter have escaped 
notice. 

It is, perhaps, one of the most 
striking illustrations of the differ- 
ence in spirit and principle between 
our patent law and that of Eng- 
land, that whereas in the latter the 
patentee's right rests upon his being 
first to disclose the invention to the 
public 6^ his patent^ with us the 
question of right is determined by 
reference to the date of invention. 
The inquiry is, who first made, not 
who first disclosed to the public, 
an invention which may be in dis- 
pute. 

Under our law an inventor does 
not lose his rights merely by public 
use or sale of his invention during 
a period not exceeding two years prior 
to his application for a patent. It 
maybe questioned, perhaps, whether 
this two years grace be not too great 
a stretch of liberality ; certaiqjy? 
however, it allows time, which in 
most cases would be ample either 
for ascertaining practically the posi- 
tive and relative utility of an idea, 
or for obtaining that pecuniary aid 
which a poor inventor may need for 



48 



the bringing of his invention into 
use. 

Time taken in conducting experi- 
ments with an invention is attended 
with the risk that the invention may 
be made by some other person in the 
meantime, or that the idea may 
come to tlie knowledge of some un- 
scrupulous party, who will not hesi- 
tate to appropriate and patent as 
his own, the original conception of 
another, if it seem likely to prove at 
all valuable. As applications for 
patent are secret ex parte transac- 
tions, such theft might be consum- 
mated without the knowledge of the 
true inventor, until on applying 
for his patent, he should find an- 
other party alreadj'- in possession of 
a patent wrongfully obtained. This 
probability, were there no check upon 
it, would prevent, by making too 
hazardous, that expenditure of time, 
money, and skill, which is necessary 
to reduce many original inventions 
to the best practical shape, and 
would compel the premature patent- 
ing of half-hatched ideas. This 
danger the law cannot entirely 
obviate, but it has provided some 
measure of protection to inventors 
during the time which may be re- 
quired by them for conducting ex- 
periments to mature their ideas. 

Section 40 of the act provides that 
any citizen of the United States who 
has made a new invention or dis- 
covery, and desires further time to 
mature the same, may file a caveat 
in the secret archives of the Patent 
Office. 



Caveats 
Are simply brief descriptions set- 
ting forth the design of an invention 
and its distinguishing characteris- 
tics, accompanied by a statement 
that the caveator who claims the 
invention as his own, is engaged in 
taking steps to perfect it, prior to 
applying for letters-patent. This 
caveat is filed in the secret archives 
of the Office, and is accessible only 
to the officials and the caveator, or 
such persons as he may duly author- 
ize to have access to it. As a caveat 
refers to an avowedly uncompleted 
invention, while letters-patent are 
granted only for one which is com- 
plete, no proceedings are taken 
upon a caveat by the Office, but it re- 
mains for the caveator to mature his 
invention and file his application for 
a patent within one year; which 
time, however, may be extended 
from year to year by renewing the 
caveat. It is common to allude to 
caveats as affording a temporary 
security, thus leading many inven- 
tors to a mistaken impression that 
a caveat is a sort of temporary 
patent. This it is not ; a patent 
being a grant of the exclusive right 
for a certain period to make, wse, 
and sell a completed invention, is 
the act of the public in consideration 
of the disclosure of such completed 
invention, A caveat is merely 
the caveator's own act in reference 
to an incomplete invention which he 
desires to keep secret till he has had 
time to mature it, in order that he 
may then disclose it and obtain from 



49 



the public the exclusive right to 
make, use, and sell it. A caveat, 
therefore, is, as its name implies, sim- 
ply a warning, notifying the Patent 
Office that the caveator has made 
an invention, which he intends to 
mature and to apply for a patent 
therefor within one year. 

The effect which the law gives to 
this warning is to make it obligatory 
upon the Patent Office during one 
year after the filing or the renewal 
of a caveat, to grant no patent for 
the invention to any other claim- 
ant without giving the caveator op- 
portunity to establish his priority of 
right. To this end, notice is to be 
given to the caveator of the filing of 
any interfering application for a 
patent, without, however, informing 
him as to the name or whereabouts 
of the applicant, and he is allowed 
three months from the time of such 
notice to complete his invention and 
file his application for a patent. If 
he fail to do this, he will be con- 
sidered to have waived his claim, 
and that of the other applicant will 
be considered and passed upon with- 
out reference to the caveat. 



Section 24 of the Patent Act pro- 
vides, that any person who has in- 
vented or discovered any new and 
useful art, machine, manufacture, 
or composition of matter, or any 
new and useful improvement there- 
of, not known op: used by others in 
this country, and not patented or 
described in any printed puhlication 
in this or any foreign country before 



his invention or discovery thereof, 
and not in public use or on sale for 
more than two years prior to his ap- 
plication, unless the same is proved 
to have been abandoned, may, upon 
payment of the duty required by 
law, and other due proceedings had, 
obtain a patent therefor. 

It is first to be noticed in this sec- 
tion that the term "any person" 
includes citizens and aliens, who in 
reference to the patent laws stand 
upon precisely the same footing. 

And it may be here stated that 
an inventor, whether citizen or al- 
ien, who may have previously pat- 
ented his invention in foreign coun- 
tries, does not thereby prejudice his 
right to a patent here, provided that 
the invention has not been intro- 
duced into public use — by which is 
meant a use in public — in the United 
States /or more than two years prior 
to his application for the patent, but 
his patent will expire at the same 
time with the foreign patent, or if 
there are several foreign patents, 
then with that having the shortest 
term, and in no case can the term 
of a United States patent exceed 
seventeen vears from its date (sec- 
tion 25). 

Next comes the recital of patent- 
able subject-matters, and then the 
recital of conditions essential to the 
obtaining of a patent, and which of 
course therefore are essential to the 
maintenance of a patent which may 
have been granted. 

These conditions are — 

1st. That the thing for which a 



60 



patent is sought shall not have been 
knoion or used by others in this 
country before the invention thereof 
by the claimant. 

The mere knowledge or use of the 
thing in 2i foreign country will not, 
of itself, bar or invalidate a patent, 
and proof of such knowledge or use, 
except it be in the nature of a 
patent^ or printed piiblication^ is 
not admissible against a patent 
excepting where it is proposed, by 
bringing home to the patentee a 
knowledge thereof, to show that his 
claim of invention was not a bond 
fide claim, and that his patent was 
obtained by fraudulent representa- 
tion. As to what knowledge or use 
in this country will suffice to bar or 
invalidate a patent, the rule would 
seem to be that it must not have 
been an entirely secret knowledge or 
use, but open so far as to argue ac- 
cessibility by the public : beyond this 
it matters not how limited the prior 
knowledge or use may have been. 

2d. That the thing for which a 
patent is sought shall not, prior to 
the invention thereof by the appli- 
'cant, have hQ^n patented or described 
in any printed publication in this or 
any foreign country. 

A prior patent for, or printed 
publication of, a similar thing is the 
best possible evidence of want of 
novelty in an invention, and to this 
end ii foreign patent or printed pub- 
lication is equally effective with a 
domestic one. In either case it is a 
record, accessible to the public, of 
the prior existence of the invention 



claimed by the applicant or patentee 
as original with himself. But to 
bar an application or invalidate a 
patent, a prior patent or printed 
publication, whether domestic or 
foreign, should set forth the inven- 
tion so clearly and intelligibly, as to 
enable a competent person skilled in 
that branch of the arts to which the 
alleged invention may appertain, to 
make or use it. Mere vague sug- 
gestions of something similar will 
not suffice. 

In the absence, then, of any prior 
knowledge or use in this country^ 
and of any patent or printed publi- 
cation m this or any foreign country^ 
an invention is new in the ej-e of the 
law, and the inventor has an in- 
choate right therein which he may 
perfect and secure by a patent. 

He is not bound to apply for a 
patent within any specified time, 
nor will delay to do so, for however 
long a time, of itself, there being no 
other claimant, forfeit his right. The 
statute, however, points out two 
waj^s in which the right may be lost : 

1. By public use or sale of the 
invention for more than two years 
prior to application for a patent. 

Public use is a use, not hy the 
public necessarily, but any use — 
though it may be only limited — in 
public, so that there may be public 
knowledge of the thing for more 
than two years. 

As public use or sale for less than 
two years is not a bar to a patent, 
and as within such period an inven- 
tor micfht have made his invention 



51 



a source of profit to himself by 
manufacture and sale, or by allow- 
ing the use of it to others, it would 
not be right if under a patent sub- 
sequently obtained he could disturb 
or prohibit the further use of the 
articles thus previously sold by him, 
or which he had permitted to be 
made and used. It is therefore en- 
acted by Section 37 that every per- 
son who may have idurcliased of the 
inventor, or with his knowledge and 
consent may have constructed, any 
newly invented or discovered ma- 
chine, or other patentable article, 
prior to the application for a patent, 
or sold or used one so constructed, 
shall have the right to use, and vend 
to others to be used, the specific thing 
so made or purchased, without Ua- 
bility therefor. 

The terms of this section exclude 
from its benefit those who may, 
prior to application for patent, have 
constructed or applied the invention, 
in defiance of the inventor's right, 
or without his assent or knowledge. 
2. By abandonment. 
An invention may be abandoned 
at any time prior to application for 
patent. But the law does not favor 
and will never raise, except in the 
case of public use or sale for more 
than two years, a presumption of 
the abandonment of an invention. 
Before it will be concluded that an 
invention has been abandoned, there 
must be some clearly proven, act or 
expression on the part of the in- 
ventor, unmistakably indicating his 
intention not to claim any exclusive 



right in the invention, but to allow 
it to become public property, for an 
invention can be abandoned only to 
the puhlic at large. 

As a rule, therefore, a valid pat- 
ent may be obtained for any im- 
provement which has not been 
known or used by others in this 
country^ nor been patented or de- 
scribed in any printed publication 
in this or any foreign country before 
the date of its invention or dis- 
covery by the party claiming it as 
his own, unless he has allowed it to 
be in public use or on sale for more 
than two years before his application 
for a patent, or has at any time be- 
fore such application by a voluntary 
and deliberate act abandoned it to 
the public. 

Should the claim of an applicant 
for a patent be rejected, or should 
a patent granted be assailed in liti- 
gation, on the ground of a prior 
foreign patent or description in a 
foreign printed publication, if the 
applicant or patentee can establish 
by competent proof that his inven- 
tion preceded the date of such prior 
foreign patent or publication, a pat- 
ent will be granted him if he be an 
applicant ; or, if he be a patentee, 
his patent will be sustained. 

And, in the case of an applicant 
for a patent, ex parte evidence in 
such case suffices to establish his 
priority of right. 

Such evidence is also competent 
to overcome the rejection of a claim 
for a patent; on the ground of de- 
scription in a printed publication in 



62 



this country, or a rejection on the 
ground that the invention is already 
in pubUc use or on sale, unless it 
shall appear that such public use or 
sale has been for more than two 
years prior to the application for a 
patent. 

But if application for a patent 
be made for something already jjai- 
ented in this country, or which an- 
other party is at the same time 
seeking to patent here, it may be 
necessary in either case to try the 
question of priority of invention in 
the Office. This is done by means 
of what is termed an interference — 
a judicial proceeding in which the 
rival claimants of the same inven- 
tion are allowed to present testi- 
mony in support of their respective 
claims, the testimony being taken 
in the same mode as in a cause in 
equity, and each party having the 
right to be present at the examina- 
tion of, and to cross-examine, his op- 
ponent's witnesses. This departure 
from the general rule, which makes 
applications for patents altogether 
ex parte proceedings, is necessitated 
by the circumstances of the case. 
The Patent Office can lawfully grant 
a patent only to the true and first 
inventor, and can lawfully grant a 
second patent for the same thing 
only to him who shall appear to be 
the actual true and first inventor, 
and therefore to have a claim supe- 
rior to that of the first patentee. If, 
therefore, there be before the Office 
at the same time two or more par- 
ties, each claiming to be the true 



and first inventor of the same 
thing ; or, if application be made 
for a patent for the same thing, in 
which another party already has, by 
patent granted, a vested exclusive 
right, testimony must be adduced 
and proceedings had to determine 
the question of priority of inven- 
tion. To these proceedings it is 
absolutely necessary that the rival 
applicants in the one case, or the 
applicant and prior patentee in the 
other, should both be made parties ; 
for by these proceedings their re- 
spective rights in the Patent Office 
are to be bound ; and no man's rights 
are to be bound except by proceed- 
ings to which he is a party. 

It is provided, therefore, by Section 
42 of the Patent Act, that "when- 
ever an application for a patent 
which, in the opinion of the Com- 
missioner, would interfere with any 
pending application, or with any 
unexpired patent, he shall give notice 
to the applicants, or applicant and 
patentee, as the case may be, and 
shall direct the primary examiner 
to proceed to determine the question 
of priority of invention. And the 
Commissioner may issue a patent 
to the party who shall be adjudged 
the prior inventor." 

Some years ago, the proceedings 
in interference cases were very loose 
and unsatisfactory. There was no 
mode of compelling the attendance 
of necessary witnesses ; there was 
no system or order as to the time 
and mode of taking the testimony, 
and the parties were left to develop 



53 



by such evidence as they could, such 
a case as they might choose. Con- 
sequently, the endeavor of each 
party was to make out his own case, 
by the light of that made out by 
his opponent ; and there was every 
opportunity and temptation to the 
parties to adapt their proof to the 
emergencies of the occasion, rather 
than to the true facts of the case. 

Judicious improvements, how- 
ever, in the law, and in the rules 
and regulations of the Patent Office, 
have, by assimilating the proceed- 
ings in interference cases as far as 
possible to those in a court of justice, 
given them a fair degree of the 
justice and certainty attending or- 
dinary judicial proceedings. 

The law has provided for securing 
the attendance of necessary wit- 
nesses by subpoena. 

The rule of the Office is, that in 
all cases the prior patentee or ear- 
liest applicant for patent, shall be 
deemed prima facie the first in- 
ventor, thus putting him in the posi- 
tion of a quasi defendant. 

The later applicant, therefore, or 
party complainant, must first take 
testimony to show the date of his 
invention, for which purpose a cer- 
tain limit of time is allowed him, 
after which, within another set 
period, the prior patentee or appli- 
cant must take the testimony in 
support of his claim, and after the 
closing of all such direct testimony 
the party who first took testimony 
may take rebutting testimony. 



As the main object of each party 
to an interference is to establish a 
date of invention earlier than that 
proved by his opponent ; if, as under 
the old rules, the cases to be proved 
were left entirely in the dark till 
developed by the evidence, the party 
taking evidence last would have the 
opportunity, which he might not 
always scorn to use, to adapt his 
proof to the emergencies of the case. 
The late Commissioner of Patents, 
Fisher, consequently established the 
following beneficial rule : 

Before declaring an interference 
proper, a preliminary interference 
will be declared, requiring each party 
to file a statement under oath, giving 
a detailed history of the invention. 
The statement of each party re- 
mains sealed till opened at an ap- 
pointed time by the examiner of 
interferences. If that officer then 
determines that the respective state- 
ments call for an interference, he 
declares it. • 

If the party upon whom rests the 
burden of proof— i e. , the latest ap- 
plicant fails to file a statement, or 
if his statement fails to overcome 
the prima facie case made by the 
respective applications — i. e., if the 
date of invention given by the later 
applicant should not be anterior to 
the date of application by the earlier 
— or if it shows that he has aban- 
doned his invention, or that it has 
been in public use more than two 
years before his application, the 
other party will be entitled to an 
immediate adjudication of the case 



64 



upon the record : unless a presump- 
tion is created that his right to a 
patent is affected by the alleged pub- 
lic use of the invention, in which 
case the interference may be pro- 
ceeded with. This latter proviso is 
necessary because a determination 
against the right of one man to a 
patent cannot be made upon the ex 
parte statement of another. A per- 
son's ex parte sworn statement may 
be allowed to determine the question 
of his own right, but not that of the 
right of anotlier. It is further pro- 
vided that if the earlier applicant 
fail to file a preliminary statement, 
he will not be allowed to present any 
testimony going to prove that he 
made the invention at a date prior 
to his application. 

The preliminary statements are 
not evidence for the parties making 
them. 

Under the present law and office 
rules, then, cases of interferences 
may be regarded as a fair and effi- 
cient means of trying and determin- 
ing questions of priority of inven- 
tion, and a just ultimate decision 
may be expected in every case, for 
parties to such a case have the same 
rights of appeal from the Examiner 
to the Board of Examiners in chief, 
and from that Board to the Com- 
missioner of Patents in person, as 
in other questions touching the 
rights of applicants for patents. 

As regards the cases in which 
under the law the Commissioner 
may declare an interference, they 
include any and every case in which 



there may arise adverse claims of 
invention, whether by reason of two 
or more contemporary pending ap- 
plications for patents for inventions 
altogether or in some material part 
the same, or by reason of an appU- 
cation for a patent or for a reissue 
with a claim to something claimed 
or clearly shown in any patent or 
patents previously granted. 

This power may be very benefi- 
cially used to check what was at 
one time a practice as common as 
it is mischievous, that of reissu- 
ing patents for the sole purpose 
of so extending their claims as to 
cover some feature of value in pat- 
ents granted subsequently to those 
sought to be reissued. 

In the case of an interference 
between an application for a patent 
and a patent granted, the power of 
the Commissioner extends only to 
granting another patent to the ap- 
plicant, should he appear to have 
been the actual first and true inven- 
tor. He cannot recall or cancel the 
2?rior patent. 

His office is in its nature minis- 
terial, and concerns only the grant- 
ing of patents ; and his discretion- 
arj'-, or, what may be termed his 
quasi-judicial powers, therefore, are. 
confined to the consideration and 
determination of such questions only 
as concern the granting of patents. 
His duty is to grant a patent to 
whomsoever may appear to be the 
true and first inventor of a patent- 
able subject-matter, and justly en- 
titled under the law to receive a 



55 



patent therefor. In the execution 
of this duty it is necessary for him 
to consider and decide disputed 
questions of priority of invention ; 
but with that and tlie grant or re- 
fusal of a patent, in accordance with 
his determination, his duty and 
power end. 

The power of annulling or de- 
creeing the invalidity of patents, or 
other public grants, is one of the 
chancery powers of the courts of 
the United States. 

Consequently where, through the 
issue of an interference in the Pat- 
ent Office, or through accident, there 
are- two or more patents for the same 
thing, of which only one of course 
can be valid, the invalidity of the 
others can be authoritatively as- 
certained and decreed only by a 
court of the United States having 
jurisdiction of such questions. 

Under Section 58 of the Patent 
Act : " Whenever there shall be in- 
terfering patents, any person inter- 
ested in any one of such interfering 
patents, or in the working of the in- 
vention claimed under either of such 
patents, may have relief against the 
interfering patentee, and all parties 
interested under him, by suit in 
equity against the owners of the 
interfering patent ; and the court 
having cognizance thereof, on notice 
to adverse parties and other due 
proceedings had, may adjudge and 
declare either of the patents void in 
whole or in part, or inoperative, or 
invalid in any particular part of the 
United States according to the in- 



terest of the parties in the patent or 
the invention patented. But no 
such judgment or adjudication shall 
aftect the right of any person ex- 
cept the parties to the suit and 
those deriving title under them 
suhsequent to the rendition of such 
judgment." 

In the case of an interference in 
the Patent Office between an ap- 
plication and a prior patent, 
should the applicant be adjudged 
the prior inventor, the only measure 
of justice which the Commissioner 
has power to perform is, by grant- 
ing a patent to the applicant, to put 
him in a position to avail himself, 
should he desire to do so, of the 
remedy presented by this section 
against the prior patentee. 



The point to be adjudged in a 

case of interference is "priority of 
invention." The general rule is 
that he is in the eye of the law the 
first inventor who has first perfected 
and adapted the invention to use. 

But this rule is subject to the 
qualification that he who first in- 
vents, i. e., mentally originates, 
shall have the prior right, if he v)ere 
using reasonable diligence in adapt- 
ing and perfecting the invention. 
Thus it is made by the statute a de- 
fence against a patent, that the pat- 
entee had surreptitiously or unjustly 
obtained the patent for that which 
was in fact invented by another, 
who was using reasonable diligence in 
adapting and perfecting the same. 

It has been held that the words 



56 



"surreptitiously," or "unjustly," 
as here used, do not necessarily im- 
ply that had faith on the part of the 
patentee must be shown to make 
this defence available. But it will 
be deemed that a patent has been 
wrongfully obtained, when it is for 
something which was in fact first 
invented by another than the pat- 
entee, if the prior inventor was at 
the time using reasonable diligence 
in adapting and perfecting the in- 
vention. 

This reconciles the reference in 
our patent law of the doctrine that 
"he who is prior in time has the 
better right" to the time of the 
making of an invention, with the 
general maxim that "the laws 
serve the diligent, and not the sloth- 
ful." A right of priority must be 
perfected by diligence. 

The courts will not allow the plea 
of "prior invention" to overcome 
the title of a patentee whose patent 
was obtained in good faith, unless 
it be shown that the alleged prior 
inventor had actually reduced his 
conception to practice in a practi- 
cally useful and operative form, or 
that being the first to invent, he was, 
at the time the patentee obtained his 
patent, exercising reasonable- dili- 
gence to adapt and perfect the in- 
vention. 

A mere prior conception of an 
idea, ending in experiment, and 
never reduced to that practical 
shape in which alone it can be use- 
ful to the public, and can attract 
public attention, will not suffice to 



destroy the title of a patentee, who 
being himself a hond fide original 
inventor, has reduced the invention 
to successful practice, and published 
it by obtaining his patent. 

By these judicially established 
principles the Patent Ofiice is guided 
in determining the questions of 
"priority of invention," in cases of 
interference. 

If the interference be between the 
claim of an applicant and that of 
a patentee, i\\Q prima fade presump- 
tion is in favor of the latter, and 
the burden is upon the applicant to 
show that he was the first inventor, 
and also that he had either actually 
reduced the invention to a practi- 
cally operative shape before the in- 
terfering patent was obtained, or 
that at the time it was obtained, he 
was exercising reasonable diligence 
to bring it into such shape ; and, 
furthermore, it must appear that the 
applicant has not unnecessarily de- 
layed bringing his claim, but that 
he has been reasonably diligent, as 
well in bringing his application as 
in perfecting his invention. If he 
cannot show this, the first patent 
will not be disturbed by the grant 
of a second 

"Where the interference is between 
independent apxjlicants for patents, 
there is not that strengtii of pre- 
sumption in favor of either party 
which the possession of a patent, a 
vested right, creates : still there is 
a presumption in favor of the earli- 
est applicant, on the reasonable prm- 
ciple that, in the absence of proof to 



57 



the contrary, the first to seek the 
benefit of the law must be presumed 
to have the prior and better right. 
This presumption goes no further 
than to require that the later appli- 
cant must first prove a date for his 
invention anterior to the application 
of his opponent, before the latter 
need ofier proof as to the date of his 
invention other than that which his 
application affords. 

The general principles applied to 
the decision of priority, as between 
applicants for patents, are the same 
as in other cases. He will, as a rule, 
be held the first inventor, entitled 
to the benefit of the law, who being 
bond fide an inventor first reduced 
the invention to a practical form 
beneficial to the public. 

As to the evidence which will 
sufiice to prove invention, the rule 
would seem to be that the idea must 
have been so far reduced to practice 
as to have been illustrated or de- 
scribed in a mode sufficient to en- 
able a person skilled in the art to 
which the invention may refer, to 
make or practice it, without calling 
for the exercise on Ms part of more 
than the ordinary skill of his trade. 
Less than this will not evidence a 
matured, and therefore patentable, 
invention ; such an invention as the 
law will protect. 

It will be seen that the question 
of " diligence" has a most material 
bearing upon that of "priority of 
right in law," and this matter of 
diligence enters not only into the 
reduction of an invention to prac- 



tice, but into the making and prose- 
cution of application for a patent, 
wherever there is a question of right 
between independent inventors. Es- 
pecially is this the case where one 
or other of the disputants is in pos- 
session of a patent obtained in good 
faith : the right of such a patentee 
will not be disturbed in favor of a 
slothful inventor, prior in point of 
conception, but who, after the grant 
of the patent to his competitor, of 
which as matter of public record he 
in common with the rest of the pub- 
lic is presumed to have knowledge, 
has unnecessarily delayed perfecting 
and adapting the invention to use, 
and presenting his claim. 

It has been found necessary to 
spur the diligence of applicants for 
patents even in cases entirely ex 
parte by providing (Sec. 32) that all 
applications for patents shall be com- 
pleted and prepared for examination 
within two years after the filing of 
the petition, and in default thereof, 
or upon failure of the applicant to 
prosecute the same within two years 
after any action therein, of which no- 
tice shall have been given to the ap- 
plicant, they shall be regarded as 
abandoned by the parties thereto, 
unless it be shown to the satisfac- 
tion of the Commissioner that such 
delay was unavoidable. 



If an applicant for a patent is not 
satisfied with the justice of a de- 
cision of the Commissioner of Pat- 
ents, refusing him a patent, he may 
appeal to the Supreme Court of the 



58 



District of Columbia, which may 
reverse the decision of the Commis- 
sioner. By the decision of the court, 
duly certified to and recorded in the 
Pi tent Office, tlie furtlier proceed- 
ings in that office are to be regula- 
ted, and if no reasons are found for 
refusing a patent, beyond those 
raised and adjudicated in the ap- 
peal, the Commissioner is bound by 
a decision favorable to the appli- 
cant to issue a patent. But as the 
court is to consider the case, on the 
evidence produced before the Comrais- 
sioner^ and its decision is confined 
to the points raised in the appeal^ if 
the Commissioner after such de- 
cision finds good reasons, not in- 
volved in the appeal, or depending 
upon new evidence not formerly be- 
fore him, for still withholding the 
patent, it is within his discretionary 
power so to do. In other words, the 
decision of the court upon appeal, if 
favorable to the applicant, is not 
that the Commissioner shall issue a 
patent, but that he shall not with" 
hold it upon the grounds raised in 
the appeal ; and it might seem that 
as often as the Commissioner may 
refuse a patent upon new grounds, 
the applicant may appeal to the 
court. The right of appeal to the 
Supreme Court of the District of 
Columbia does not extend to parties 
in interference. 

The remedy of an inventor against 
what he may consider an unjust re- 
fusal of a patent does not end even 
here. 

Section 52 of the act provides 



that when an application for a pat- 
ent is refused /or any reason what- 
ever, either by the Commissioner, 
or by the Supreme Court of the Dis- 
trict of Columbia on appeal from the 
Commissioner, the applicant may 
have remedy by bill in equity in a 
court of the United States having 
cognizance of such cases under the 
patent law ; and the court upon 
notice to adverse parties, and other 
due proceedings had, may adjudge 
that such applicant is entitled, ac- 
cording to law, to receive a patent 
for his invention, as specified in his 
claim, or for any part thereof, as the 
facts in the case may appear. 

This remedy by bill in equity is 
applicable to all cases where a pat- 
ent may have been refused. 

If the refusal has been on account 
of an adverse decision by the Com- 
missioner, in a case of interference, 
the party in whose favor the Com- 
missioner's decision was rendered is 
entitled to notice, and to become a 
party in the proceedings upon the 
bill. Where there is no opposing 
party a copy of the bill is to be 
served on the Commissioner. 

Proceedings under this section are 
not in the nature of an appeal, and 
are not to be governed by the evi- 
dence in the case before the Com- 
missioner, but they are original 
proceedings, in which such original 
evidence may be adduced as shall 
be considered essential to arriving 
at a just decision. 

An adjudication in favor of the 
applicant authorizes the Commis- 



59 



sioner to issue such patent as it 
shall be decided the applicant is en- 
titled to, upon the applicant filing 
in the Patent Office a copy of the 
adjudication, and otherwise com- 
plying with the provisions of the 
law. 



It only remains now briefly to in- 
quire as to the modes in which a rem- 
edy may be had for the infringement 
of a patent. 

There are two ends which it is 
generally essential to the interests 
of a patentee he should have the 
means of accomplishing by resort 
to the courts, — a remedy for injury 
from past infringement, and the 
prevention of infringement in the 
future. 

Damages for infringement may be 
had by action at law in the Circuit 
Courts of the United States, or 
those District Courts exercising cir- 
cuit court jurisdiction. And as a 
check upon deliberate, wrongful in- 
fringements, the courts are empow- 
ered, "whenever in any such ac- 
tion a verdict is rendered for the 
plaintiff, to enter judgment thereon 
for any sum above the amount 
found by the verdict as the actual 
damages sustained, according to 
the circumstances of the case, not 
exceeding three times the amount 
of such verdict, together with the 
costs. But this remedy at law is 
generally quite inadequate to the 
needs of patentees, smce it does not 
prevent further infringement by the 
party sued, and for each new act of 



infringement fresh suit must be 
brought. For the purpose of pre- 
venting further infringement, it is 
necessary to resort to proceedings in 
equity, which may be brought in the 
same courts. Section 55 of the law 
empowers the courts, upon bill in 
equity filed by any party aggrieved, 
to grant injunctions to prevent the 
violation of any right secured by 
patent, on such terms as the court 
may deem reasonable." 

Injunctions are either temporary 
or perpetual. A temporary injunc- 
tion is one granted before a final 
hearing of the cause, and may be 
granted at the discretion of the 
court at any time after the filing of 
the bill, upon motion, of which rea- 
sonable previous notice shall have 
been given to the defendant, accom- 
panied by copies of the affidavits to 
be read in support of the motion. 

A temporary injunction prohibits 
continuance of the infringement 
complained of in the bill until the 
question of the complainant's right 
under his patent shall have been 
tried, or until further order of the 
court. It is a summary proceed- 
ing, in order to protect a patentee 
against the irreparable injury that 
might ensue to him by an unchecked 
continuance of infringement during 
the time necessary for bringing a 
cause to final hearing. 

But as it is a proceeding tending 
to bind the rights of a defendant, 
before a fair and full trial has been 
had, and one which may work 
great, and, as it may prove, unwar- 



60 



ranted injury to the party enjoined, 
the courts exercise the power with 
great caution, and only where there 
has been exclusive possession under 
the patent for some years, with ac- 
quiescence of the public in the pat- 
entee's right, or where the patent has 
been previously judicially sustained 
after full trial at law or in equity ; 
nor will the power be exercised if 
the defendant by affidavits, rebut- 
ting and overbearing the weight of 
those of the complainant, can throw 
reasonable doubt, on grounds not 
theretofore adjudicated, upon the 
patentee's title, or can indicate that 
he is not a mere wrongdoer, but has 
a good defence against the action. 
The court in granting a temporary 
injunction, may couple with the 
grant such conditions, either on one 
or on both sides, as under the cir- 
cumstances of the case may seem 
reasonable ; or, it may allow the 
defendant to give security to keep 
an account of profits from the use of 
the invention, and this it will do, 
where it appears from the circum- 
stances that in this way the interests 
of the patentee will be substantially 
j)rotected, while an injunction would 
work disproportionate mischief to 
the defendant. A temporary inj unc- 
tion will not be granted where it 
appears that the patentee has not 
been diligent in seeking his remedy, 
but has allowed infringement to con- 
tinue for a considerable period of 
time without taking steps to pre- 
vent it. 
A temporary injunction may be 



dissolved at any time upon motion 
of the party enjoined, made after 
reasonable previous notice to the 
complainant, and supported by affi- 
davits showing good and sufficient 
reason. 

A perpetual injunction is one 
granted upon a decree in favor of 
the patentee upon full proofs and 
argument, and its effect is to enjoin 
the defendant from infringement 
during the term of the patent. 

Formerly it was the practice for 
the court in equity, when an appli- 
cation for an injunction raised dis- 
puted questions of fact affecting the 
patentee's title, to order a trial at 
law, that these questions of fact 
might be passed upon by a jury ; but 
since patent causes, whether in law 
or in equity, are cognizable in the 
same court, and since it is competent 
for the court in equity to consider 
and determine all disputed points in 
such causes, whether of fact or of 
law, generally patent cases are now 
so tried and determined, upon proofs 
taken after the course in equity, be- 
fore an examiner appointed by the 
court. 

The questions of fact arising in 
patent causes are generally of such 
a nature that they may be deter- 
mined much more speedily, readily, 
and satisfactorily by a judge than 
by a jury, and under the present 
law all the remedies which proceed- 
ings at law might afford a patentee 
for infringement of his right, he can 
obtain by proceedings in equity, 
while the latter will also afford him 



61 



further remedy, very much more 
complete and beneficial .than he 
could possibly obtain by proceed- 
ings at law. 

"Upon a decree being rendered 
for infringement, the complainant 
shall be entitled to recover, in addi- 
tion to the profits to be accounted 
for by the defendant, the damages the 
complainant has sustained thereby, 
and the court shall assess the same, 
or cause the same to be assessed 
under its direction ; and the court 
shall have the same powers to in- 
crease the same, in its discretion, 
that are given by this Act to increase 
the damages found by verdict in 
actions upon the case." (Sec. 55.) 

It is not necessary to sustain an 
action for infringement, that the 
voliole of the invention patented 
should have been infringed, but 
remedy may be had for the infringe- 
ment of any material or substantial 
part thereof claimed. 

Actions for infringement may be 
brought in the name of the owner 
or joint owners of the legal title to 
the patent throughout the whole of 
the United States, or within the 
particular part or portion of the 
United States in which the action 
is brought. A licensee cannot bring 
such an action, except he join with 
him the party or parties in whom 
the legal title to the patent is vested 
within the territory over which the 
court wherein the action is brought 
has jurisdiction. Actions for in- 
fringement must be brought during 



the term of the patent, or within 
six years after its expiry. 

CHAPTER X. 

THE STATUS OF FOREIGN 
INVENTORS. 

It is interesting and instructive 
to trace the history of our patent 
legislation as touching foreigners — 
to note the narrow and exceedingly 
exclusive spirit by which it was form- 
erly characterized, and how, gradu- 
ally but surely, this gave way to 
more liberal and enlightened no- 
tions, until at last the true policy 
was perceived and adopted of treat- 
ing all inventors alike, without re- 
gard to nationality. 

The original Patent Act of 1790 
provided in general terms for the 
grant of patents upon the petition 
" of any person or persons," but the 
Act of 1793 limited the right of ob- 
taining patents to citizens of the 
United States. The Act of 1800 
extended the privilege to such aliens 
as should, at the time of petitioning 
for a patent, have resided within 
the United States for two years, 
and thirty-two years later the right 
was further extended to "every 
alien who, at the time of petitioning, 
shall be resident in the United 
States, and shall have declared his 
intention, according to law, to be- 
come a citizen thereof" The right 
thus conferred upon resident aliens 
was coupled with provisos and con- 
ditions placing them on a less ad- 
vantageous footing than citizens. 



62 



Kon-resident aliens were totally 
excluded from the benefit of the law 
until 1836, the Act of which year 
returned to the wording of the origi- 
nal Act of 1790, "any person or 
persons," and embodied a distinct 
provision recognizing foreign pat- 
entees in a very peculiar way. We 
refer to the regulation of fees for ap- 
plication. The scale of fees adopted 
was, for citizens or resident aliens, 
who had made oath of their inten- 
tion to become citizens, thirty dol- 
lars ; for subjects of the kingdom 
of Great Britain, five hundred dol- 
lars ; and for all other foreigners, 
three hundred dollars. This very 
peculiar distinction could be vindi- 
cated only upon the ground of the 
expense to Americans of obtaining 
patents in other countries, and espe- 
cially in Great Biitain ; it appears 
to have been forgotten that as this 
expense was not a matter of any 
discrimination between natives and 
foreigners there, it did not warrant 
such discrimination here. 

The Act of 1836 further discrimi- 
nated against aliens, by providing 
that it should be a good defence 
against a patent that the patentee, 
if an alien at the time the patent 
was granted, had failed and neg- 
lected, for a period of eighteen 
months, to put and continue on sale 
to the public, on reasonable terms, 
the patented invention or discovery. 

The Act of 1842, which first pro- 
vided for patents for designs^ limited 
the right to obtain them to citizens, 
or aliens who, having resided in the 



United States one year, had taken 
the oath of intention to become citi- 
zens. 

So the law stood until 1861, the 
Act of which year repeals all laws 
then in force, "discriminating as to 
the rates of fees between the inhabi- 
tants of the United States and those 
of other countries which shall not 
discriminate against inhabitants of 
the United States." 

Finally, the Act of 1870 has, in a 
still more liberal spirit, established 
one rate of fees for natives and 
foreigners alike, without regard to 
reciprocity. 

Furthermore, this Act, insomuch 
as it repeals the Act of 1830, among 
others, removes from foreigners all 
obligation to put or continue on 
sale their inventions for which they 
have obtained American patents 
since July, 1870. The Act also ex- 
tends to "any persons," irrespective 
of nationality, the right, which was 
previously limited to citizens, of ob- 
taining patents for "designs." 

The only right from which the 
law, as it now stands, excludes non- 
resident aliens is that of filing ca- 
veats. The nature of this solitary 
exception will be understood by re- 
ference to pages 46 and 47, where 
the character and object of a caveat 
are explained. 

For the information of foreign in- 
ventors it is proper to draw atten- 
tion to two features of the law — 
which, though they be not features 
of discrimination against them, are 
much more likely to afiect their in- 



63 



terests, than those of native inven- 
tors. 

The first is, the provision that an 
American patent, for an invention or 
discovery previously patented or 
caused to be patented in a foreign 
country, sliall expiic at tlie same 
time with the foreign patent ; or, if 
there be more than one, at the same 
time with the one having the short- 
est term. 

The second matter is a rule of 
evidence proceeding out of the law, 
which makes patentable new and 
useful improvements not known 
or used by others in this country, 
and not patented or described in 
any printed publication in this or 
any foreign country. It is conse- 
quently held that, as a rule, the only 
proof of prior invention abroad, ad- 
missible to bar the grant of a patent, 
or to invalidate a patent granted, is 
a foreign patent^ or printed imhlica- 
tioy\. The only exception to this 
rule is that which we have already 
referred to — admitting oral testi- 
mony to bring home to the party 
against whom it is offered, a knowl- 
edge of the prior foreign invention, 
thus showing that his claim of origi- 
nality is not a bond fide claim. It 
is important, then, for the foreign 
inventor to bear in mind that mere 
oral testimony of the existence of 
his invention abroad cannot be re- 



ceived solely to establish priority of 
invention ; that f^^- this particular 
purpose his available proof is limited 
to a patent or a printed publication. 
This limitation, of course, applies 
to all cases of the existence of inven- 
tions abroad, whether made by for- 
eigners or by citizens of the United 
States. 

CONCLUSION. 

At this point we close our brief 
summary of the general features of 
the Patent Laws of the United 
States, and with it the treatise. 

As far as was possible, we have 
ranged the subjects together in such 
a waj'- as to produce a connected 
review of the entire ground. Of 
course, there are many special mat- 
ters of law and doctrine respecting 
patents which have not been touched 
upon, specialties out of place in a 
pamphlet avowedly devoted to a 
grouping of information of a merely 
general character. 

As to those subjects which are 
treated more at length, we venture 
to express a hope that our endeavors 
plainly and concisely to illustrate 
the principles governing property in 
invention, will not be altogether in- 
effectual in throwing light upon 
matters which have heretofore, by 
so many minds, been but partially 
and obscurely understood. 

H. & C. H. 



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